Protecting distinctive trade marks: Will Adidas have to change its stripes?

Image source: Photos by ERRN from Pexels

However, as reported by The Fashion Law, the US sportswear giant did receive some relief in the latest legal battle with Adidas in Germany, when the Higher Regional Court in Dusseldorf ruled in favour of Nike’s appeal on a lower court’s previous order, allowing the US sportswear giant to include three stripes on some of its trouser designs.

The Duesseldorf Regional Court decision in 2022, prohibiting Nike from using two or three stripes on five of its trouser designs after Adidas’ trade mark violation lawsuit in the same year, is partially overturned by the recent decision, thus permitting Nike to use the stripes on four of the disputed models while maintaining the ban on the one remaining model.

'Everyday design'

Nike argued that Adidas’ scope of protection in its three-stripe mark is too narrow, highlighting that ‘striped decoration’ doesn’t necessarily relate exclusively to a single brand, as it is an “everyday obvious design” used by many sportwear manufacturers throughout the industry, including different interpretations of the three-stripe design on the outer seams of track pants. Nike asserted that Adidas’ striped mark fails to function as an indicator of source of the apparel upon which it appears.

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Adidas fought back, attempting to show the court that the consuming public routinely identifies the multi-stripe mark with Adidas when it is used on sporting goods and apparel.

Defining distinctiveness

This decision highlights the ongoing complexity of trade mark disputes when deciding whether a mark carries distinctiveness as directed in Section 9 of South Africa’s own Trade Marks Act 1993. When considering whether a trade mark has distinctiveness, we refer to how unique a brand or product name is in the context of trade marks and service marks.

It plays a crucial role in determining whether a trade mark is eligible for registration. Fanciful marks (entirely invented) and arbitrary marks (common words in a context unrelated to their dictionary meaning – Apple for computers) are examples of marks which should be eligible for registration.

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In contrast, suggestive marks (hinting on the product’s nature and without directly describing) and descriptive marks (describing the products) general would not be eligible for registration without acquiring distinctiveness through secondary meaning. The same principles apply when considering the distinctiveness of logo marks, whether it is an ordinary representation or unique to the products and service offering.

Whether or not the recent ruling will turn the tide on Adidas’ aggressive enforcement position relying on its well-known registered three parallel stripe trade mark within the sportswear industry, is yet to be seen, as the trade mark battles continue to shape the fashion industry, and Adidas’ three stripes remain a focal point.

For now, the ongoing rivalry between Nike and Adidas, contending for dominance in the sporting goods industry, goes into overtime.