20 de julho de 2018

Adidas: 3-stripe design in likelihood of confusion but not the Trefoil logo

Direito Autoral | notícias | patente | Propriedade Intelectual |

Victory and defeat for Adidas AG in Japan: Adidas successfully defended its famous 3-stripe design before the opposition chamber of the Japanese Patent Office. However, the German sports manufacturer was unable to defend the Adidas Trefoil logo.

Defeat in the case of Adidas versus XIAT

Adidas Xiat Logos

Both decisions were preceded by many years of disagreement in Japan. In the case of the Adidas Trefoil logo, the German sports manufacturer filed an appeal with the Japanese Patent Office (2017-900038) against the registration of a similar logo of the XIAT trademark. In view of the high profile and popularity of the Adidas Trefoil logo, Adidas stated that there was a likelihood of confusion and that the applicant was therefore aware of the Trefoil logo and had applied for its similar trademark with malicious intent. In addition, the applicant has filed more than 253 trade mark applications in the last 18 months.

Article 4.1 of Japanese Trademark Law prohibits the registration of a trademark which may lead to confusion with another company.

The Board of Appeal confirmed that the Adidas Trefoil logo was well known and popular with regard to sports shoes, sportswear and sports equipment, but denied the likelihood of confusion between the two logos in question.

Adidas Xiat Logos

Visually, the XIAT logo is sufficiently distinguishable from the Trefoil logo, was the judgement. It is very similar to a part of the Trefoil logo, but that is of little importance. The Adidas Trefoil logo as a whole is so famous that a likelihood of confusion is unlikely.

Therefore, a few weeks ago, the Japanese Board of Appeal rejected the opposition from Adidas AG.

Victorious in the case of Adidas versus Masaki MIKAMI

Adidas Xiat Logos

In the second case, Adidas AG also filed an opposition against the contested three-line device trademark. But the JPO Board of Appeal had already rejected the appeal in 2012. Four years later, Adidas AG filed a nullity complaint (2016-890047) to cancel the contested mark retroactively. Adidas cited the likelihood of confusion with the famous 3-stripe design of Adidas.

The Japanese Trade Mark Law provides that a notice of invalidity under Article 4.1 shall be rejected if a trade mark has been registered for five years or more. This does not apply if the trademark has been registered for a fraudulent purpose.

The Board of Appeal of the Japanese Patent Office ruled in early March 2018:

Adidas Xiat Logos

Adidas’ 3-stripe design has earned a very good reputation in Japan since 1971. Adidas changes his shoes every now and then, showing different types of 3-stripe designs, with a slight change in length, width, angle, contour or color of the stripe. The 3-stripe design is therefore known in variations. There is a likelihood of confusion, since the disputed mark creates the same visual impression. The difference in detail is negligible, said the Japanese Board of Appeal. After all, Adidas shoes are also available in variations on the famous 3-stripe design. So, in this case Adidas was victorious.

Conclusion

It is not enough to have a famous trademark to prevent imitators before the Japanese Board of Appeal. It is easy to see and traceable that the overall visual impression is decisive. However, the fact that a part of a very famous logo can be used by a third party despite its great similarity makes it difficult for all brand manufacturers to predict whether your original trademark can be protected under Japanese trademark law.