Adidas defeated in 3-stripe trademark dispute

The Japan Patent Office (JPO) held in an opposition filed by Adidas AG that trademark registration no. 6085087 for horizontal three-stripes (Opposed mark) shall remain as valid as ever and entirely dismissed Adidas’ claims based on its famous three stripes.
[Opposition case no. 2018-900382, Gazette issued on February 28, 2020]

ULTRA MUSIC FESTIVAL

Opposed mark (see below) was applied for registration on October 10, 2017 over clothing, headwear, footwear in class 25, advertisement and promotion of music festival, concert in class 35, arrangement and conducting of musical performances, music festival, concerts in class 41 by Ultra Enterprises Inc., a U.S. business entity organizing outdoor electronic music event “ULTRA MUSIC FESTIVAL (UML)”, and published for registration on October 23, 2018.

Apparently, opposed mark is used as a symbolic logo for Ultra Music Festival’s RESISTANCE set.

Opposition by Adidas

On December 21, 2018, Adidas AG filed an opposition and argued opposed mark is revocable under Article 4(1)(vii) and 4(1)(xv) of the Japan Trademark Law in relation to its famous three stripes (see below).

Article 4(1)(vii)

Article 4(1)(vii) prohibits any mark likely to offend public order and morals from registering.

Based on a remarkable degree of reputation and popularity to Adidas three stripes, opponent asserted, applicant must have been aware of Adidas three stripes and filed opposed mark with a malicious intention to take advantage of the reputation and credit of opponent’s famous trademark and impair the goodwill embodied on its iconic three stripes.

Article 4(1)(xv)

Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.

Adidas argued that, from appearance and concept, opposed mark evidently gives rise to a same impression with Adidas three stripes since each stripe of the mark is depicted in the same direction, width and shape, besides a space between stripe also has the same width with the stripe.

Average consumers with an ordinary care of goods/services in question who have been quite familiar with Adidas are likely to associate opposed mark with Adidas’ three-stripes. Inter alia, when opposed mark is used on apparels with a smaller configuration printed in one spot, so-called ‘one-point mark’, it must be difficult for relevant consumers to distinguish opposed mark with Adidas three-stripes because of its resemblance. Besides, goods/services in question are closely related to opponent business, namely sportswear, sports shoes, sports events. If so, it is highly anticipated that relevant consumers would confuse a source of opposed mark with opponent.

JPO Decision

The Opposition Board admitted a high degree of reputation and popularity to Adidas three stripes in relation to sport shoes, sportswear, sports gear at the time of initial filing and registration of opposed mark.

In the meantime, the Board found a low degree of originality of three stripes and similarity between the marks, from visual, phonetic, and conceptual points of view. The Board stated opposed mark can be perceived as ‘three-stripes’ deployed inside a vertically long rectangle. On the other hand, opponent’s marks consist of ‘three-stripes’ deployed inside a triangle or parallelogram. Even if Adidas three stripes have acquired remarkable reputation, because of a low degree of similarity and the originality, relevant consumers at the sight of opposed mark would not hesitate to consider a source of opposed mark unrelated to Adidas.
Thus, the Board held it is unlikely that relevant consumers confuse or associate opposed mark with Adidas.

The Board also negated opponent’s allegation of ‘one-point mark’ theory by stating that even if average consumers have tendency to pay less attention to details of a mark when used on apparels with smaller configuration, due to dissimilar impression caused by a different outline (vertically long rectangle, triangle, and parallelogram) of respective mark, opposed mark shall be undoubtedly perceived as a distinctive three-stripes unrelated to Adidas by relevant consumers with an ordinary care.

Besides, from the produced evidences, the Board found it was not foreseen a circumstance to offend public order and morals from registering opposed mark and give harmful effect to the international faith.

Based on the foregoing, the Board concluded opposed mark shall be irrevocable under Article 4(1)(vii) as well as (xv) and granted registration a status quo.

Adidas scores win against adidog in trademark dispute

The Opposition Board of Japan Patent Office (JPO) decided in favor of Adidas AG to retroactively cancel trademark registration no. 5990777 for word mark “adidog” (Opposed mark) due to a likelihood of confusion with “adidas”.
[Opposition case no. 2018-900019, Gazette issued on August 30, 2019]

Opposed mark

Opposed mark “adidog”, a word mark in standard character, was filed on October 17, 2016 by an individual, designating clothing for pets in class 18 and published for registration on November 21, 2017 without confronting with office action from the JPO examiner.

TRADEMARK OPPOSITION – Article 4(1)(xv)

On January 16, 2018, before the lapse of a two-months opposition period, Adidas AG filed an opposition to opposed mark. In the opposition, Adidas AG contended opposed mark shall be cancelled based on Article 4(1)(xv) of the Japan Trademark Law.

Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.

Adidas AG argued opposed mark is likely to cause confusion with Adidas’ renowned trade name “adidas”, which enjoyed a high degree of reputation as a source indicator of Adidas sportswear and sports shoes both in Japan and abroad, because of visual resemblance between and opposed mark “adidog”, and close relatedness/proximity of goods in question.

Opposition Board decision

The Board found that:

  1. It is unquestionable that trade name “Adidas” has acquired a remarkable degree of reputation well before the filing date of opposed mark as a result of continuous use on sportswear and marketing activities in Japan since 1971.
  2. “Adidas”, coined after the name of opponent’s founder ‘Adi Dassler’, is an invented word with no dictionary and other known meaning. Besides, the Board could not find any words starting with ‘adid’ in language dictionaries of English, French, German and Italian as well as registered trademarks with the prefix ‘adid’ in Japan other than opponent mark.
  3. Opposed mark, consisting of six alphabets, starts with ‘adid’. In the meantime, stylized 5th letter ‘a’ of opponent mark looks like a device combining a short vertical bar with ‘o’. The final letter ‘s’ gives rise to a similar impression with ‘g’ since both letters have the same way of writing and configuration with a digit – ‘8’. Thus, opposed mark shall be deemed similar to “adidas” from appearance and sound.
  4. Clothing for pets is one of fashion items consumed by general public. Sportswear is also consumed by general public not only for exercise use but also fashion items. It becomes apparent that distributors of sports gears, apparels, bags, and shoes also deal with clothing for pets nowadays. If so, both goods shall be closely related.

Based on the above findings, the Board concluded that consumers who are accustomed to the circumstance, are likely to confuse clothing for pets using opposed mark with Adidas’ famous trade name “adidas” or misconceive a source from any entity systematically or economically connected with Adidas AG. Thus, opposed mark shall be cancelled in violation of Article 4(1)(xv) of the Trademark Law.

Adidas unsuccessful in an attempt to prevent trademark protection for two-stripes

The Opposition Board of Japan Patent Office (JPO) held in an opposition filed by Adidas AG that trademark registration no. 6016240 for two-stripes device (Opposed mark) shall remain as valid as ever and entirely dismissed Adidas’ claims based on its famous three stripes.[Opposition case no. 2018-900100, Gazette issued on August 30, 2019]

Opposed mark

Opposed mark (see below) was applied for registration on June 16, 2016 over shoes in class 25 by Marubeni Footwear, a Japanese business entity, and published for registration on February 27, 2018.

Opposition by Adidas

On April 24, 2018, Adidas AG filed an opposition and argued opposed mark is revocable under Article 4(1)(vii) and 4(1)(xv) of the Japan Trademark Law in relation to its famous three stripes (see below).

Article 4(1)(vii)

Article 4(1)(vii) prohibits any mark likely to offend public order and morals from registering.

Trademark Examination Guidelines set forth criteria for the article and examples.
Among others, “Trademarks whose registration is contrary to the order predetermined under the Trademark Act and is utterly unacceptable for lack of social reasonableness in the background to the filing of an application for trademark registration.”

Based on a remarkable degree of reputation and popularity to Adidas three stripes, opponent asserted, applicant must have been aware of Adidas three stripes and filed opposed mark with a malicious intention to take advantage of the reputation and credit of opponent’s famous trademark and impair the goodwill embodied on its iconic three stripes.

Article 4(1)(xv)

Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.

Adidas argued that, from appearance, opposed mark evidently gives rise to a same impression with Adidas three stripes since each stripe of the mark is depicted in the same direction, width and shape, besides a space between stripe also has the same width with the stripe.

Given opponent mark has been substantially used in various colors, length, and configurations, average consumers with an ordinary care of shoes who have been quite familiar with Adidas are likely to associate opposed mark with Adidas’ three-stripes. Inter alia, when each stripe of opposed mark is used in different color on side upper sole and a space between the stripes (upper sole fabric) has other color, and thus opposed mark looks like depicting three stripes on shoes, it is highly anticipated that relevant consumers would confuse its source with opponent.

Opposition decision

The Opposition Board admitted a high degree of reputation and popularity to Adidas three stripes in relation to sport shoes, sportswear, sports gear at the time of initial filing and registration of opposed mark.

In the meantime, the Board found a low degree of originality of three stripes and similarity between the marks, from visual, phonetic, and conceptual points of view since opposed mark can be clearly perceived as ‘two-stripes’. Even if Adidas three stripes has acquired remarkable reputation, average consumers of sports shoes would not mistake two stripes for three stripes in purchasing shoes with opposed mark.
If so, the Board believes it is unlikely that relevant consumers confuse or associate opposed mark with Adidas.

The Board also negated opponent’s allegation of a possible ‘three-stripes’ appearance under specific color combination by stating that opposed mark is nothing but a two-stripes design mark. The space in between two stripes does not constitute opposed mark. If so, the allegation shall be irrelevant to the case.

Besides, from the produced evidences, the Board found it was not foreseen a circumstance to offend public order and morals from registering opposed mark and give harmful effect to the international faith.

Based on the foregoing, the Board concluded opposed mark shall not be revocable under Article 4(1)(vii) as well as (xv) and granted registration a status quo.

Adidas triumphs over 3-stripe trademark battle

After six years of prolonged dispute, Adidas AG could achieve a victory over trademark battle involving famous 3-stripe design. In a recent trademark invalidation appeal, case no. 2016-890047, the Trial Board of Japan Patent Office (JPO) decided in favor of Adidas AG to retroactively null trademark registration no. 5430912 for three lines device mark (see below) due to a likelihood of confusion with Adidas’ famous 3-stripe design.

 

Disputed mark

Disputed mark was filed on March 2, 2011 by a Japanese business entity, designating shoes in class 25 and registered on August 5, 2011 (Registration no. 5430912).

To oppose the registration, on October 18, 2011, Adidas AG filed an opposition against disputed mark based on Article 43bis of the Trademark. But the Opposition Board of JPO overruled the opposition and decided to admit registration of disputed mark on June 27, 2012. Four years later, Adidas AG filed an invalidation appeal with an attempt to retroactively null disputed mark based on Article 4(1)(xv), 46(1)(i) of the Trademark Law.

The Japan Trademark Law provides where a trademark has been registered for five years or more, an invalidation appeal based on Article 4(1)(xv) shall be dismissed unless the trademark was aimed for registration with a fraudulent purpose.

It is imagined that the provision urged Adidas to take an invalidation action eventually since the appeal date is just one week before a lapse of five years from registration.

 

Invalidation trial

Adidas AG repeatedly argued a likelihood of confusion between Adidas’ famous 3-stripe design and disputed mark because of a high degree of popularity and reputation of 3-stripe design as a source indicator of Adidas sportswear and sports shoes, visual resemblance between the marks.

Board decision

The Board found that:

  1. Adidas’ 3-stripe design has acquired a substantial degree of reputation well before the filing date of disputed mark as a result of continuous marketing activities in Japan since 1971.
  2. Occasionally, Adidas promotes shoes depicting various types of 3-stripe design with a slight modification to length, width, angle, outline or color of the stripe.
  3. Disputed mark gives rise to the same visual impression in the mind of consumers with 3-stripe design by taking account of similar graphical representation consisting of three lines in parallel leaning to the left. Difference in detail is negligible since it can be perceived as a variation of Adidas shoes given actual business circumstances.

Based on the above findings, the Board concluded that relevant consumers and traders are likely to confuse shoes using disputed mark with Adidas’ famous 3-stripe design or misconceive a source from any entity systematically or economically connected with Adidas AG. Thus, disputed mark shall be invalidated in violation of Article 4(1)(xv) of the Trademark Law.

 

Adidas successful in invalidating three bones device mark

In a trademark invalidation appeal, case no. 2017-890017, the Trial Board of Japan Patent Office (JPO) decided in favor of Adidas AG to retroactively null trademark registration no. 5799460 for three bones device mark (see below) due to a likelihood of confusion with Adidas’ famous 3-stripe design.

Disputed mark

Disputed mark was filed on May 1, 2015 by a Japanese business entity, designating the goods of clothing for pets in class 18 and registered on October 16, 2015.

Subsequently after the registration, Adidas AG filed an opposition against disputed mark on November 26, 2015. Since it ended in vain, Adidas AG challenged inadequacy of the decision and registration by means of invalidation trial.

Invalidation trial

During the invalidation trial, Adidas AG argued a likelihood of confusion between Adidas’ famous 3-stripe design and disputed mark because of a high degree of popularity and reputation of 3-stripe design as a source indicator of Adidas sportswear and sports shoes, visual resemblance between the marks, and close relatedness of its consumers and commodity goods.

Board decision

The Board found that:

  1. Adidas’ 3-stripe design has acquired a substantial degree of reputation well before the filing date of disputed mark as a result of continuous marketing activities in Japan since 1971.
  2. Three bones device mark visually resembles with 3-stripe design by taking account of the same graphical representations allocating three trapezoids in different length in parallel to be seen it constituting a triangle in overall appearance.
  3. It becomes apparent that distributors of sports gears, apparels, bags, and shoes also deal with clothing for pets nowadays.

Based on the above findings, the Board concluded that consumers who are accustomed to the circumstance, are likely to confuse clothing for pets using disputed mark with Adidas’ famous 3-stripe design or misconceive a source from any entity systematically or economically connected with Adidas AG. Thus, disputed mark shall be invalidated in violation of Article 4(1)(xv) of the Trademark Law.


It should be noteworthy that a decision to dismiss opposition is not appealable under the Japan Trademark Law. If opposed party wants to argue the decision, there is no way other than invalidation trial.