Adidas trade mark decision review

Adidas has had success protecting its Originals trade mark by cancelling a similar trade mark based on a cannabis leaf.

In August 2017, Addicted Original Ltd (“Addicted”) registered a UK figurative trade mark depicting, in black and white, a symmetrical cannabis leaf with five horizontal black lines intersecting the lower section above the word in a stylised font “addicted”.  The trade mark was registered in classes 25, 35, 36 and 42.

Adidas AG (“Adidas”) applied to have the mark cancelled relying on a UK trade mark for the well-known Adidas Originals logo: A black and white symmetrical leaf with three points and three horizontal lines intersecting the lower section, above the word in a stylised font “adidas” (the “trefoil device mark”).

The case came before the Intellectual Property Office and the Hearing Officer noted that “Between 1960 and 1988 between 75% and 80% of all athletes competed at the Olympic Games wearing products made by Adidas and by 1974, 75% of all players participating in the Football World Championship in Germany wore clothing from the applicant’s range.”  It was also submitted by Adidas that a number of stores had been opened which were dedicated to Originals products only, with a London store opening in 2014.

Adidas produced worldwide turnover figures for 2012 – 2016 as well as the Forbes magazine article that ranked it 3^rd in the World’s Most Valuable Sports Brands 2015. Further evidence was provided on the advertising campaigns of the Original products that had included celebrities such as David Beckham, Katy Perry, Pharrell Williams and Rita Ora.  As a result the Hearing Officer was able to find (unsurprisingly) that Adidas invested heavily in promoting its brand through high-profile celebrities, thus developing significant goodwill.

The visual, aural and conceptual similarities between the marks were considered by the Hearing Officer. Visually it was considered that both words began with the letters “AD”, that the same font had been used and that manner in which the marks are set out, with the device above the wording, is the same. Given the differences in the words and each of the leaf devices however, it was considered that there was a low to medium degree of visual similarity.

Where Adidas lost

It was held that there would be no likelihood of direct confusion on the basis that it would be unlikely for an average consumer to mistakenly recall one mark for the other.  On indirect confusion, given the differences between the mark, it was held that there was no reason the average consumer would assume that the two marks originated from the same or economically linked undertaking, despite there being association. As a result, Adidas lost on this ground.

Based on this finding and despite the difference in tests between misrepresentation (for passing off) and the likelihood for confusion and on the basis that the mark would only bring to mind the trefoil mark, it was held that this it would not lead to a misrepresentation and thus no passing off occurred.  As a result, Adidas lost on this ground as well.

Where Adidas won

The fact that the Addicted mark had been based on the trefoil mark was not lost on the hearing officer who held that, due to the  familiarity created by the mark, there would be “an unfair advantage and commercial leg up” for Addicted. Adidas was successful on this ground.

On the basis that for some consumers, the mark would have conveyed a “clear message relating to the addiction of illegal drugs”, it was held that the registration of the mark undermined the principles of accepted social values.  As a result the application on this ground was successful.

Success on two grounds was sufficient for Adidas to obtain a declaration of invalidity, thus resulting in the cancellation of the Addicted mark and, for Adidas, protection of its trefoil device mark.

For expert legal advice on trade marks, contact our team.

This article was co-written by John Shaw and Ben Evans.