Thom Browne wins against adidas in stripes war

Andrea Terragni - Partner

New York designer Thom Browne's company (part of the Ermenegildo Zegna Group since 2018) recently prevailed in a dispute brought by adidas before the District Court for the Southern District of New York to protect its famous trademark consisting of the characteristic three parallel stripes. The U.S. Court recognised that Thom Browne, a designer known for his high-end tailored clothing, had not infringed the German multinational company's trademark rights by affixing a motif consisting of four parallel stripes to his clothing and footwear models.

In reality, the trademark dispute between the two companies had already been pending for a few years. Indeed, as early as 2018, adidas had filed an opposition before the European Union intellectual property office (EUIPO) against a Community trademark application filed by Thom Browne to protect a sign consisting of four parallel stripes. That opposition was followed in 2020 by other oppositions before the United States Patent and Trademark Office in which adidas challenged three trademark applications for red, white and blue stripes to distinguish the footwear produced by the New York designer. adidas considered that all of the above-mentioned trademarks applied for by Thom Browne were confusingly similar with its own earlier registrations claiming the famous three stripes.

Returning to the current decision of the Southern District Court of New York, the German sportswear giant had filed a lawsuit against Thom Browne in June 2021, claiming that Thom Browne's use of a sign consisting of parallel stripes infringed its trademark rights and constituted confusingly unfair competition in the sportswear sector.

In fact, the German company claimed that Thom Browne's use of a mark similar to its own famous three-stripe mark used by adidas for over fifty years caused confusion among consumers as to the origin of the goods themselves, or otherwise led them to believe that there was some collaboration or affiliation between the two companies. In particular, adidas challenged Thom Browne's use of the stripes in a manner similar to its own three-stripes sign, thereby creating confusion in both the aesthetic appearance and the overall commercial impression that such products provided. adidas claimed that, in particular, the products in the category of sportswear and sports shoes manufactured by the American company were identical to the same categories of products that had long been marked with its own three-stripe mark.

In addition to the obvious similarities between the trademarks of the parties, adidas' accusation was also strongly focused on the element of competition because, in order to ground its claim for damages of approximately $8 million, the German company had pointed out to the U.S. judge that Thom Browne was not only using the four stripes in its core business, i.e. high fashion clothing, but was invading in an increasingly aggressive manner the sportswear segment and in general the sectors where adidas is market leader. And this not only with the expansion of its sportswear range, but also through promotional agreements such as the one concluded by Thom Browne with the famous Spanish club F.C. Barcelona.

Arguing the total difference between the respective distribution channels of luxury and sportswear, as well as the wide gap between the prices of the respective products, the American company's defensive argument was obviously centred on the absence of any risk of confusion for consumers. Perhaps more interesting and less obvious is what Thom Browne's defence also argued in noting how adidas waited a long time before taking legal action against its own use of the stripes. As already did in other jurisdictions, also before of the New York Court Thom Browne pointed out that adidas had already objected to Thom Browne's use of three horizontal stripes on his garments as early as 2007, but then tolerated for a long time the use of four parallel horizontal stripes on his apparel products, which Thom Browne had begun on purpose in order to distance himself as far as possible from the German company's trademarks.

In essence, Thom Browne thus argued that adidas' delay in taking action to prevent him from using its own four-stripe trademark was unreasonably long because the German sportswear giant knew, or reasonably should have known, that Thom Browne was using a four horizontal stripes design. For the New York designer's counsel, this would also have constituted implicit proof that the respective striped brands had in fact co-existed on the market for a long time without adidas having suffered any damage.

While Thom Browne obviously welcomed his own acquittal, pointing out that for over twenty years his company has been an innovative brand in the luxury fashion segment, where it offers a completely unique and distinctive design that combines classic tailoring with American sportswear sensibilities. On the other hand, adidas has already declared that it will appeal the New York District Court ruling, a decision that not surprisingly comes on top of other negative ones suffered by the German multinational in the EUIPO and that have already called into question the distinctive character of its three-stripe brand.

Italian version

Intellectual Property

Trademarks

On the evidence of use of the trademark in nullity and opposition proceedings

Laura Bussoli - Senior Counsel

Not everyone knows that once a trademark has been filed and registered, it must be put into effective use by its owner: the law - both national and European - provides for an initial grace period of five years from registration, after which the owner may be required to prove the effective use of his trademark.

Evidence of use can be requested both in opposition proceedings by the trademark applicant and in opposition proceedings by the trademark applicant, with the consequence that in the absence of useful evidence, the opposition is automatically rejected.

Similarly, the evidence of use of the trademark could be requested in the framework of a revocation procedure for non-use provided for at Community level by articles 18 and 58 European Union Trademark Regulation, EU 2017/1001. Also in this case the consequences are far from trivial for the trademark owner, since if the administrative judge considers the evidence insufficient, the trademark would be declared null and void as of the date of the request for revocation and therefore cancelled from the register.

Therefore, the use of the trademark is fundamental even in all cases in which the trademark is registered: it is not sufficient to have registered the trademark in a series of product classes in order to ensure the widest possible protection, if this registration does not correspond to a genuine use of the trademark within the terms of the law.

It is therefore particularly important for the owner to collect proof of use over time, especially once the five-year grace period has expired.

It is also very important to know what evidence of use is relevant to the administrative judge.

One of the most important pieces of evidence of use are sales invoices.

As repeatedly stated by the courts such invoices must show significant and frequent volumes of sales during the relevant period (five years prior to the application for nullity or, in opposition proceedings, from the time of publication).

It should be noted that offers to sell products bearing the contested trademark on websites are not sufficient in themselves to demonstrate actual use, at most they may be relevant together with other elements such as, for example, the production of supporting documents, packaging, labels, price lists, catalogs, invoices, photographs, newspaper advertisements.

On this point, the EU Court of First Instance recently expressed its opinion in case T-1/20 of October 13, 2021, rejecting the appeal of the company Mi Indutries Inc., a manufacturer of organic pet foods, confirming the decision of the Board of Appeal of the EUIPO, which had held that the extracts from the Internet site "Amazon.co.uk" where the goods bearing the contested trademark were put up for sale simply showed that the goods in question had been put up for sale, without however proving that they had actually been sold and without providing any information on the volume of any sales.

According to the case-law, the actual use of a trademark cannot be proven by probability or presumption, but must be based on concrete and objective elements that demonstrate the actual and sufficient use of the trademark in the market concerned.

According to the Implementing Regulations, furthermore, the evidence of use must cover the place, duration, extent and nature of the use that has been made of the contested trademark. It is also essential that the evidence covers the relevant five-year period: further evidence outside this period will only be considered secondarily.

Furthermore, the condition relating to the actual use of the trademark requires that it, as protected in the relevant territory, be used publicly and externally. In this respect, the Court made it clear that not only sales to final consumers but also to industrial customers and professional users (B2B sales) are relevant.

Finally, the Court pointed out that even if it is not necessary for the owner to prove constant and significant use over the entire five-year period in order to escape sanctions, the obvious absence of evidence for a significant part of the period means that the use is considered insufficient.

Italian version

• Intellectual Property

AC Milan scores against Marriot Hotels

The football club from Milan filed its logo in 2013 in the European Union for various products and services, among which class 43. However, the application in class 43 finds resistance, from AC Hotels, not the most usual opponent for AC Milan.

The AC-element is the most dominant element of AC Hotels and they have to keep AC-trademarks away in class 43, the most important class for AC Hotels. Besides their logo and the wordmark AC HOTELS BY MARRIOTT, their best weapon is the wordmark AC.

But the opposition is rejected. The trademarks are sufficient different. The only corresponding element is AC. According to EUIPO, “the letters AC are negligible elements due to their minuscular size and position in the middle of the other letters in the contested sign, and are not noticeable at first sight, considering also that this complex sign has other visually outstanding elements and, therefore, it is very likely that the letters AC are being disregarded by the relevant public.”

On 19 June 2019, the EU General Court ruled that the EUIPO had been correct in granting registration of the figurative sign that Associazione Calcio Milan SpA (AC Milan) had applied for. [Case T‑28/18].

PEAR TRADEMARK IS NOT CONFUSING WITH APPLE

The EU Court recently ruled on the visual and conceptual similarity between brands and, reversing the decision of the EUIPO on this point, found that the well-known Apple brand and the Pear brand cannot be confused with each other.

The story takes its cue from the opposition presented by Apple to the application for registration of the European figurative mark 'Pear', filed by Pear Technologies Ltd. Following the acceptance of the opposition, the latter lodged an appeal before the EUIPO, which confirmed but the first decision. Consequently, Pear Technologies challenged the provision before the EU Court which denied the existence of a similarity between the two signs, comparing them both visually and conceptually.

At first the EUIPO Board of Appeal recognized a remote degree of similarity between the two signs, as both represented rounded shapes of a fruit with the related stem / leaf in an identical position but the Court then came to a different conclusion.

The judge in fact observed that the two signs are visually very different from each other: in fact, they represent two distinct fruits and the one (the Apple brand) constitutes a solid form, while the other (Pear) is a set of separate objects between them; moreover, the element in the upper right corner represents in one case a leaf (Apple) and in the other a stem (Pear); finally, the word element of the Pear brand cannot be underestimated, as it has significant dimensions with respect to the shape, a different color, a particular font and is in capital letters. In conclusion, the judge ruled that the reputation of the earlier sign does not matter in a similarity judgment, and that the marks in question are visually different.

From a conceptual point of view, the Court overturned the conclusions of the Board of Appeal EUIPO, emphasizing that there is conceptual similarity only when two signs evoke images having a similar or identical semantic content.

In the present case, the EUIPO had at first considered that the two marks represented two distinct fruits but that however they were similar for biological characteristics but the court held that the signs in question evoke the idea of ​​a certain fruit, while they recall the general concept of "fruit" only indirectly.

Secondly, he reiterated that, in many states, members of apples and pears are used in proverbs as examples of different things and not comparable, and the possible similarity in size, color or consistency (characteristics that, moreover, share with many others fruits) is however an element that can be perceived by the public only in the context of a very detailed analysis, without considering that it is unlikely to assume that the consumer is aware of their origin from the same family of plants.

Based on these considerations, therefore, the EU Court annulled the decision of the EUIPO Board of Appeal, recognizing the possible influence exercised by the reputation of the earlier trademark.

THE "BREXIT BEER" CASE.

On January 30, 2019 EUIPO Grand Board of decisions was recently faced with the case of the application of the “Brexit” Trademark. The case concerns the eligibility for registration of the figurative sign “BREXiT” for ‘energy drinks containing caffeine; beer’ in Class 32.

 The application was refused by the examiner for lack of distinctiveness and against public policy as it was pointed out that the relevant public includes all consumers in the EU as they frequently encounter the term through the mass media and the internet.

With respect to the infringement of public policy or to accepted principles of morality the GB found that word ‘Brexit’ denotes a sovereign political decision, that was taken legally and has no negative moral connotations; it is neither an incitement to crime, nor an emblem for terrorism or a byword for sexism or racism. The word alone does not express an opinion. The fact that part of the UK public may have been upset by a controversial decision taken democratically does not constitute an offence. The GB therefore concluded that the sign cannot be deemed to be contrary to the accepted principles of morality, in and of itself, nor when used as a brand for the goods applied for.

Nevertheless, the term was, already at its filing date, so well-known to consumers as the name of an event of a historical and political nature that it would not be associated, prima facie, with specific goods originating from a specific trader. It may only acquire distinctiveness if consumers are sufficiently exposed to it in a trade context. Moreover, the colours and font are unable to divert the attention of the public away from the non-distinctive message conveyed by the word. The background evoking the Union jack accentuates this message. For the above reasons, the GB refused the application and dismissed the appeal.

NIKE'S ATTEMPT TO REGISTER THE WORD FOOTWARE

Late last month, Nike filed an intent-to-use trademark application for registration with the U.S. Patent and Trademark Office (“USPTO”) for the word “FOOTWARE” – for use in connection with sneaker-specific “computer hardware modules for receiving, processing, and transmitting data in Internet of things electronic devices; electronic devices and computer software that allow users to remotely interact with other smart devices for monitoring and controlling automated systems,” among other hardware and software products and services.  

It appears that Nike has tried to extend the registration to class 25 (i.e., the trademark class that covers shoes). Well that is a registration that not even Nike likely would not obtain, because the mark would be deemed descriptive of the products that refer to shoes, and thus, not registerable. 

It appears that Nike will start to brand any smart shoes as FOOTWARE as opposed to FOOTWEAR. Judging by just how famous and powerful its “Just Do It” and swoosh marks are, the new trademark just might catch on, and ultimately, serve to identify Nike’s smart shoes as a whole (and not just their tech components). As for the application, itself, it is currently pending review by the USPTO.

If the company can win over the USPTO on this one (and if the similar proceedings currently underway before the UKIPO are any indication, there’s a chance it will be able to), it might walk away with not just a major win but the beginning of a pretty striking trademark and branding scheme.

Christian Louboutin's Red Shoe Soles are a valid Trademark.

According to a recent decision by the Court of Justice, the red color of the Christian Louboutin shoe sole is a mark of position and not a mere form and as such constitutes a valid right of property.

This is the decision rendered by the EU Court of Justice, after the French maison had sued the Dutch company Van Haren for selling women's shoes with high heels and red soles.

The Dutch company in 2012 had started selling the "5th avenue by Halle Berry" model - and was sued by Louboutin for counterfeiting. Van Haren defended itself by invoking the "nullity" of the Louboutin brand, appealing to the fact that "the EU Directive on trademarks lists several grounds for invalidity to registration, in particular, with respect to signs consisting exclusively of the shape that gives a substantial value to the product ".

The decision c-163/16 establishes instead that the "protection" of the Louboutin brand red sole "does not concern a specific shape of high-heeled shoe sole (which would not be protected as a EU trademark), as the description of said mark expressly indicates that the outline of the shoe is not part of the mark, but only serves to highlight the position of the red color to which the registration refers. The Court also added that a trademark cannot be considered to be "exclusively from the shape where the main object of this sign is a color specified by an internationally recognized identification code".

The fashion house speaks of a "Victory for the Maison Christian Louboutin" because "the protection of the Christian Louboutin red sole brand is strengthened by the European Court of Justice". According to the company today's ruling in Luxembourg "has confirmed that the legal regime that governs the shape trademarks does not apply to the 'red sole' of Christian Louboutin", which is on the contrary "a position mark, as it has supported the Maison for many years ".

Surprise Decision on Steve Jobs Trademark.

The European Union Intellectual Property Office (EUIPO) has upheld its prior decision to grant the registration of trademark STEVE JOBS, in the name of two Neapolitan brothers, Vincenzo and Giacomo Barbato.

The trademark  was not only for STEVE JOBS, but also for a stylization, and a very particular letter J, that likely reminds consumers of another company’s logotype.

The Neapolitan brothers noticed that Apple had neglected to register its founder’s name as a trademark and, unwilling to let this opportunity go by,  registered the trademark as shown above before the EUIPO (Registration No. 011041861), in International Classes 9, 18, 25, 38 and 42.

After noticing this, Apple Inc. attacked this registration before the EUIPO, arguing that the letter J was a copy of Apple Inc.’s own apple device, with a very similar leaf, and a bite taken off it, as shown here:

After years of arguments, the EUIPO ruled in favor of the Barbato brothers, arguing that letter J is not edible, and consequently there is no relation between the bitten apple of the technological company and the “bitten” J of the Italian brothers.

Consequently, the registration was sustained, and there are now clothes being sold under the STEVE JOBS trademark. The trademark owners have also indicated that they would eventually be interested in selling electronic devices with this trademark and, with the Class 9 protection, this is very likely to happen.

Unfortunately, it is impossible to foresee how a company or market will develop and these situations cannot always be avoided, but it is important to note that comprehensive planning, and to proactively protect through trademark registration those terms important to a company.

Note: Trademark STEVE JOBS was also applied for before the USPTO (Serial No. 79141888), but rejected by said institution.

The German Battle for the Balck Friday Trademark.

In 2013, a trade mark application for Black Friday was filed in Germany. Today, the German trade mark is registered for Super Union Holdings Ltd., Hong Kong which has licensed the trade mark “Black Friday” to Black Friday GmbH, a company based in Vienna.

Since 2016, Super Union Holdings Ltd. has started to attack companies using the term Black Friday by sending warnings, such as the US e-commerce marketplace Groupon in 2016, as media reported. Another party concerned is a German entrepreneur who hosts the domain black-friday.de, a platform offering Black Friday deals.

In 2017, Super Union Holdings Ltd. sued Amazon for its use of the sign „Black Friday“ in Germany by raising, inter alia, forbearance and damage claims („Black Friday“ wird Fall für die Gerichte, Frankfurter Allgemeine Zeitung, November 6, 2017).

Of course, some companies, affected by the attacks of Super Union Holdings Ltd., have started to fire back. It is no surprise that there are more than twelve pending cancellation actions against the German trademark Black Friday. In addition, just recently a court in Düsseldorf / Germany has issued a preliminary injunction against Super Union Holdings Ltd. and its licensee Black Friday GmbH to refrain, inter alia, from claiming against clients of the operator of the aforementioned website black-friday.de, that the use of “Black Friday” in an ad is a trade mark infringement.

In Germany, the registration of a trade mark can be cancelled on request of any third party if it has been registered despite absolute grounds for refusal, e.g. if the mark is descriptive or does constitute an indication which needs to be kept freely available. So, what is your opinion?

Hendrix vs Hendrix

Experience Hendrix, a subsidiary of Janie Handrix, who owns the rights to all the entire estate of the guitarist and most famous brother Jimi, sued Leon Hendrix and his partner Pitsicalis for breach of copyright and trademark. In fact, Leon and Pitsicalis would illegally used some of the many Experience’s trademarks (the signature and the images of the face and bust of Jimi) to trade marijuana cigarettes and alcoholic beverages. But the battles for the commercial use of the Jimi’s name are going back in time. In 2015, the Washington District Court had ruled on the matter, forbidding Leon and Pitsicalis to use images of the musician. In addition, in January 2017, the District Court of Georgia declared illegal the use of the words "Jimi" and "Hendrix" on their websites, social media and online platforms. The lawsuit filed in March 2017 in front of the Court of New York by the Experience Hendrix declared illegal, for infringement, also the use of the name "Purple Haze" in the sale of marijuna cigarettes and T-shirts. Purple Haze, in fact, is a song written in 1967 by Jimi Handrix. Experience Hendrix has requested injunctive relief, the elimination from the market of goods violating the trademark’s right and the relatives damages. On the other hand, Thomas Osinski, Pitsicalis and Leon Hendrix’s lawyer, said that "Experience Hendrix has long known long of my clients’ products and it brings this suit only to tarnish and interfere with the lawful and correct Leon’s businesses, which respects Jimi Hendrix’s legacy." Furthermore, Osinski, regarding the content of the claim, said that, although previous rulings have excluded Leon Hendrix and his family from Jimi’s music catalog and denied the possibility to use the trademarks created by Experience Hendrix, nothing prevents Leon and his partner to sell other merchandise Hendrix-related. Who knows how the Court will fix this new family dispute.

Cavalli vs Cavalli

The court of Catania has sentenced Roberto Cavalli to pay the costs of proceedings in the trial against Mrs. Luciana Cavalli, a craftswoman, producer of shoes in Sicily.

The famous Florentine designer, six years ago, had sued his namesake for the misuse of“Cavalli” brand.

It doesn’t matter thatthe Sicilian designer’s surname is actually Cavalli and that her brand exists even before Mr. Robert’s: in his opinion, this name is used out of turn and it represents a case of unfair competition. This is why Roberto Cavalli asked the judge to ascertain an economic damage against his company and to establish a compensation, calculated in 10,000 Euros per day of use, under Article 2600 of Italian Civil Code.

But the Court has rejected the requests made by the complainant and, as Luciana Cavalli’s lawyer says, the judge has awarded the good faith and the continuous use of the trademark “Cavalli” by the manufacturer of shoes and accessories. Thus, Mrs. Cavalli won’t withdrawn her name from the market and she will be able to continue her production of leather goods “made in Italy”.

The Sicilian judgement is at odds with what was stated by the Supreme Court about Fiorucci. In that case, the Court judged unlawful the use of the brand Love Therapy by Elio Fiorucci by Mr. Fiorucci himself, because the famous trademark had been sold to a Japanese holding. That time, it was ruled that the use of the name, even if his own name, it’s not legal if it is a patronymic mark owned by third parties. It can happen, the Court explained, that a coupling effect is generated and that this leads to confusion about the more renowned trademark.

Round Two in the Sky against Skype Trademark Battles goes to Murdoch's men.

British broadcaster BSkyB has won round two in its trademark infringement battle with Skype.

The European Union General Court found on Tuesday that the two names are too similar and could cause confusion. In 2012 and 2013 the Office for Harmonisation in the Internal Market (OHIM) upheld Sky’s complaint, but Skype then appealed to the EU court.

In today’s decision the court said that there were a number of contributing factors to its decision - in particular, their “degree of visual, phonetic and conceptual similarity”. Skype has attempted to argue that the “pronunciation of the vowel ‘y’ is no shorter in the word ‘skype’ than it is in the word ‘sky’.”

Skype also copped it over its cloud-shaped logo which the court found would be reminiscent of the standalone word "sky".

The argument that the word "skype" is highly distinctive and had even entered the lexicon for identifying voice over IP services was dismissed by the court.

Skype has one last lifeline - it can appeal to the European Court of Justice, but only on points of law and within the next 2 months. Calls to Skype and parent company Microsoft for comment were not returned at time of publication.

Is Pinocchio a valid Trademark?

With its decision of 25 February 2015 the Second Board of Appeal of OHIM partially upholding an appeal, has in fact confirmed the registrability as a trade mark of the word "Pinocchio".

In 2009, Disney had obtained by the Office of the registration of the word term "Pinocchio" for goods and services included in several classes. 

In 2012, Yves Fostier owner of a Community trade mark application which contains, the word "Pinocchio", but in a figurative trademark, had filed an application at OHIM to invalidate Disney’s trademark.

According to Mr. Fostier, Disney’s Trademark established an unacceptable monopoly on matters of law which entered in popular folklore and tradition. In any case, Disney’s application lacked of distinctive character, because popular and because it fell into the public domain. 

In the first degree the Office had, however, rejected Mr. Fostier’s arguments, observing that, on the one hand, the mere fact that a sign constitute the title of a story does not exclude the ability of the same sign to function as a trademark, and, second, the plaintiff had failed to demonstrate that the term "Pinocchio" was not capable of distinguishing the goods and services for which the mark was registered, nor he had proved that the term had become customary in a European language.

Mr. Fostier appealed the decision. 

This time, the Second Board of Appeal noted that, if a title is so well known to the audience to the point that it perceives the mark corresponding to designate primarily a title of a story or a book, that brand may be lacking distinctiveness. This will be more likely if it can be shown that several versions of the story have been published or that there have been numerous television and film adaptations, that have reached a wide audience. Therefore, although in principle the titles or the names of fictional characters can be registered and function as indicators of origin, it must be asked whether a sign is capable of being distinctive for the specific products and services covered by the mark.

According to the Second Board of Appeal Pinocchio belong to this special category of signs lacking distinctive character in relation to certain goods and services in Classes 9 (in particular film, video games, films, audio and video), 16 (children's books , books of drawings, cartoons), 28 (toys and the like), 41 (amusement parks and the like, theater productions, live performances) as consumers could be be led to believe that these goods and services are connected with the history and the character of Pinocchio.

Are decisions rendered by the UIBM subject to Res Judicata?

Following the introduction of administrative oppositions in front of the UIBM in 2009, the Italian doctrine has discussed on the possible preclusive effect of decisions rendered by the Italian trademark office.

The decision rendered by the Case T-11/13 (MEGO / TEGO) at the end of September, confirms what we knew: the decisions of opposition and nullity trademarks in front of the OHIM (but the same goes for the UIBM) do not have the effect of res judicata. This means that if an opposition has been rejected, the same party can bring another action for invalidity for the same reasons and under the same earlier grounds on which the Office has already taken a decision.

Of course the same applies when an action is introduced in front of a specialized court for nullity, revocation or infringement, when the UIBM has already rendered a judgment for the same trademarks.