Is sportswear a trend in trade mark litigation?

by Federica Pigozzo

In recent years sportswear has clearly emerged as one of the biggest trends in the fashion industry. The aesthetics of brands such as Alexander Wang and Vetements is heavily influenced by cuts, silhouettes and materials that traditionally belonged primarily to activewear. Stella McCartney, Yohji Yamamoto, Raf Simons and Rick Owens have all collaborated with the world’s top sportswear labels. In the ultimate attempt to climb the fashion pyramid and gather an even wider fanbase, apparel giants including Puma, Nike and Adidas have enlisted celebrities of the likes of Rihanna, Kanye West and Pharrell as artistic collaborators.

Despite its evident benefits in terms of commercial growth and revenue streams[1], the developing bond between fashion and sportswear entails at the same time a number of conceivably alarming consequences. One of the most relevant among them is the rise of “inspired” pieces coming not only from high street stores but also from high fashion brands.

Such phenomenon is particularly evident when considering the trainers production: as stated in a recent interview by Arthur Hoeld, head of Adidas Original, ‘the number of high-end fashion brands that are copying our silhouettes […] is unheard of’[2]. Stan Smith and Superstars are undoubtedly some of Adidas’ most famous footwear models. First produced in the ’60s, they have recently taken the fashion industry by storm, quickly becoming the to-go choice to achieve that understated yet chic look that fashion editors have deemed to be in trend for the past few seasons. A glance at the production of H&M and Zara, as well as of Isabel Marant, Saint Laurent and Givenchy reveals the extent to which these silhouettes have been used as a source of inspiration. In fact, it is possible to notice how shoes that heavily channel Adidas trainers have been introduced in their collections by all the abovementioned brands and many more.

The risks attached to the described practices are clear. Even though in most cases the original producers decide not to address their imitators, trade mark law has once again proved to be an effective tool when a global brand’s repute is at stake and the threat to its reputational capital is too high to be ignored: as fashion trends keep coming back in style in a seemingly ceaseless motion, in the same way cases involving sportswear marks appear to repeatedly serve as the focus of the trade mark discussion. Two recent decisions on the matter brilliantly illustrate such tendency.

In the first one, Shoe Branding Europe BVBA v. Adidas and OHIM (case C‑396/15 P)[3], the CJEU upheld the decision of the General Court and therefore Adidas’ opposition against Shoe Branding’s European Union Trade Mark (EUTM) application for a two-stripes positional mark on a shoe. The second one, Puma SE v. OHIM and Sinda Poland Corporation (case T‑692/14)[4], saw Puma being awarded a victory in its claims against Sinda’s application for a EUTM regarding a logo in the shape of a leaping creature.

It is particularly interesting to note that in both cases the European judges overruled the previous decisions – by EUIPO Opposition Division and Boards of Appeal – on the grounds of similar arguments based on the notions of “global analysis” and “average consumer”, as well as on an examination of the criterion of similarity between the marks as per sec. 8(1)(b) Council Regulation 207/2009.

When investigating on the possible visual, aural or conceptual similarity between Sinda’s two-stripes position mark and Adidas’ three-stripes figurative one, the Board of Appeal found them to be visually dissimilar: the different number of stripes and the signs’ different location were considered to be enough to give them a distinct appearance. In fact, as the marks involved were of pictorial nature, a phonetical comparison could not be performed and neither of them was found to convey a relevant conceptual meaning. Accordingly, the Court concluded for their overall dissimilarity[5]. In the same way, the Board of Appeal confirmed the rejection of Puma’s opposition for the reason that their trade mark and Sinda’s sign did not share any visual element: if the earlier mark clearly represented a jumping feline, the one applied for seemed to depict an unidentified creature composed of features coming from different animals[6].

In both cases, the failure of the similarity test led to a lack of compliance with one of the requirements set out in sec. 8(1)(b) and therefore to a lack of infringement altogether: as the similarity of signs is a conditio sine qua non under the abovementioned provision, the enhanced distinctiveness or reputation of the earlier mark and the fact that the good or services in question were nearly identical were considered as irrelevant in the judge’s assessment.

Following appeals by both Adidas and Puma, the General Court reversed the previous judgements on similar grounds.

First of all, it was argued that the Board of Appeal failed to conduct an overall estimate of the marks in question but instead focused on slight differences between them, consequently overlooking the many features in common. On the contrary, the global analysis imposed by sec. 8(1)(b) requires the marks to be evaluated from the average consumer’s perspective, namely as a whole and by taking into account the factor of imperfect recollection[7]. In the light of such considerations, the Court ruled that neither the stripes’ different number and inclination nor the animals’ opposite leaping direction and physical features were enough to view the marks as dissimilar: in both cases, it was found that the aforementioned discrepancies were of merely minor nature and that the overall similar impression produced by the marks on the consumers would not be substantially influenced by them[8]. In the Adidas case, the CJEU reached the same conclusion and therefore confirmed the General Court’s findings[9].

Secondly, the judges further clarified the meaning of the average consumer criterion. Within their arguments, both Shoe Branding and Sinda stated that the notion should be regarded in the context of the specifications of the considered market. Thus, the consumer of expensive sports footwear uses a relatively higher degree of attention and is ‘informed, attentive, not easily fooled and well able to distinguish between different brands’[10]. Once again, both the CJEU and the General Court dismissed said assertions and explained that sport shoes should be considered as normal, everyday goods and that the reasonably well informed, observant and circumspect consumer only adopts the average degree of attentiveness when purchasing them[11]. As a consequence, the likelihood of confusion would be reasonably higher.

If we adopt a broader perspective in acknowledging these findings, it is easy to see how they assume a substantial relevance when considered in the context of the fashion industry. Silhouettes and shapes are the essence of a designer’s creative exercise; nonetheless, they are easily copied but only protectable with great difficulty and under limited circumstances. In case of infringement, trade dress protection generally constitute a useful tool under US trade mark law[12]. However, the hereby described decisions seem to indicate that traditional and especially non-traditional trade marks can be effectively used by fashion brands to seek a protection that can cover to an extent their trade dress, even within the less favourable framework of EU trade mark law.

Federica Pigozzo

Associate Editor, QMJIP

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[1] See http://www.businessoffashion.com/articles/intelligence/nike-adidas-sportswear-fashion

[2] http://www.reuters.com/article/us-adidas-fashion-idUSKCN0UZ0WA

[3]http://curia.europa.eu/juris/document/document.jsf?text=&docid=174566&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=464050

[4]http://curia.europa.eu/juris/document/document.jsf?text=&docid=174582&pageIndex=0&doclang=FR&mode=lst&dir=&occ=first&part=1&cid=611148

[5] Case T‑145/14, Adidas AG v. OHIM and She Branding Europe BVBA, paragraph 26.

[6] Case R-2214/2013-5, Puma SE v. Sinda Poland Corporation, paragraph 24.

[7] Case T-692/14, Puma SE v. OHIM and Sinda Poland Corporation, paragraph. 32.

[8] Ibid, paragraph 33-34; case T‑145/14, paragraph 44.

[9] Case C‑396/15 P, Shoe Branding Europe BVBA v. Adidas and OHIM.

[10] Ibid, paragraph 12. See also Case T-692/14, paragraph 21.

[11] Case C‑396/15 P, paragraph 24; case T‑145/14, paragraph 26.

[12] See for example Adidas America, Inc et al v. Payless Shoesource, Inc., No. 3:2001cv01655