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Adidas SE warns against offers of two-stripe clothing. This concerns sportswear (cf. OLG Munich, judgment of 26.7.2001 - 29 U 2361/97 - Drei Streifen-Kennzeichnung; in the result also: ECJ, judgment of 10.4.2008 - C-102/07 - adidas AG/Marca Mode, C&A, H&M, Vendex) as well as other clothing. Whether a trademark has been infringed depends on several factors:

•     Is there any likelihood of confusion
•     In the case of composite marks ("combination marks"), e.g. a word/figurative mark, has the influence of the respective sign components and the scope of protection of the overall sign been correctly determined?
•     Is the use of the mark perhaps even allowed in your case, e.g. because the sign was not "used as a trademark"?

Therefore, never sign hastily, even if the deadlines have been set tightly. Once you have issued the cease-and-desist declaration, you cannot subsequently claim that an infringement does not constitute a trademark infringement.

We can usually quickly identify whether the asserted claims and warning costs are justified and enforceable. Even in the case of justified warnings, we can often significantly reduce the warning costs and any claims for damages.

On July 1, 2009, Shoe Branding filed an application for the Community trademark (now: Union trademark) shown above in the form of a position mark for footwear. The application claimed protection for a mark on a sports shoe with the two stripes shown in the position depicted. The shape of the shoe itself was not to be protected. The adidas company filed an opposition to this application, essentially on the grounds of likelihood of confusion with its own earlier position mark for footwear. This looks like this:

The Office for Harmonization in the Internal Market (now: European Union Intellectual Property Office - EUIPO) rejected the opposition. The Board of Appeal of the Office also rejected the appeal filed against this decision. The conflicting signs were dissimilar. The reasonable well-informed public would not be able to confuse the opposing two-stripe design with the three-stripe design. This decision was challenged by adidas in an action before the General Court of the European Union. The latter essentially upheld adidas and annulled the decision of the Board of Appeal. Shoe Branding, in turn, appealed this decision to the European Court of Justice.

ECJ: Number of stripes unimportant

The ECJ rejected the appeal and confirmed the decision of the CFI. The latter had stated: The average, prudent, reasonable and well-informed consumer is averagely observant when it comes to buying sports shoes. The differences in skewness and positioning would require a closer examination in order to recognize them. In turn, the number of stripes would not be important to the average consumer (CFI - T-145/14 - adidas AG v OHIM and Shoe Banding BVBA, para. 40). The likelihood of confusion was not excluded by the differences in the number, angle, length and position of the stripes of the Shoe Branding mark.

What the average consumer perceives is judged by the factual authority and not by the ECJ

What the average consumer perceives is judged by the factual authority and not by the ECJ

Shoe Branding first challenged the lower court's view that the purchaser of sportswear is not very attentive because they are everyday consumer goods. The ECJ considered this argument, that the average buyer of sportswear is very well able to distinguish between different sports brands due to his special attention, contrary to the opinion of the lower court, already inadmissible. The assessment of the consumer's attention was a question of fact and therefore not a matter for the ECJ (because the latter may only decide questions of law). The clarification of facts, however, is the task of the lower court. However, the lower court had just found that the consumer is on average attentive, prudent, reasonable and well-informed when it comes to buying sports shoes. Therefore, the reasoning with which a likelihood of confusion was assumed was also not objectionable. On the contrary, the Court of First Instance of the European Union also took into account the differences between the two marks. It also found that there was a likelihood of confusion between the two marks because it correctly based its finding on the overall impression.

Indication for infringement case

The ECJ had to decide here in opposition proceedings, not in infringement proceedings. In opposition proceedings, the issue is whether the owner of an earlier trademark must tolerate the registration of a younger trademark. In infringement proceedings, the issue is whether a trademark owner must generally tolerate the use of another sign (whether registered or not). The BGH has indicated in the past that stricter standards are to be applied in assessing whether a trademark owner must tolerate a younger trademark that is likely to cause confusion in opposition proceedings than in infringement proceedings. This is because in these cases the younger applicant itself seeks a permanent right to register, which it can transfer and license (BGH v. 2.4.2015 - I ZR 59/13, para. 48 - Springender Pudel).

In the present case, however, there is much to suggest that infringement courts would also consider the Shoe Branding shoes to infringe adidas' well-known three-stripe mark. Decisions in which two-stripe markings were regarded as infringement of adidas trademarks have in any case existed for some time (e.g.: OLG München v. 26.7.2001 - 29 U 2361/97 - Drei-Steifen-Kennzeichnung; in the result also ECJ v. 10.4.2008 - C-102/07 - adidas AG/Marca Mode, C&A, H&M, Vendex).