More Confusion ConcerningStripes
TheCourt of Justice of the European Union, the European Union’s highest court, hasrecently found that a trademark consisting of two parallel stripes on a shoewas confusing with the famous Adidas three stripe trademark.
The Facts
ShoeBranding Europe BVBA (“Shoe Branding”) filed an application for a European Uniontrademark for a mark consisting of two parallel stripes on the side of theshoe. The mark was categorized as aposition mark and is shown below:
The Opposition
AdidasAG (“Adidas”) opposed the application on the basis that the applied-fortrademark was confusing with a number of trademark registrations owned by it,including the following trademark:
Initiallythe opposition was rejected by the European Union Intellectual Property Office(“EUIPO”).
The Appeal Board
Adidasappealed to the Board of Appeal EUIPO who also dismissed the appeal. The Board said that the differences in thenumber of stripes and their respective positions on the shoe were sufficient tosupport a finding that the trademarks in issue were dissimilar. Even taking into account the reputation ofthe Adidas registrations, the differences were sufficient to preclude anylikelihood of confusion in the mind of a reasonably well informed andreasonably observant member of the public. The Board arrived at this conclusion even though the goods wereidentical and independently of the fact that the Adidas marks as a result oftheir extensive use have a fairly high degree of distinctiveness.
The General Court
Adidasappealed from this decision to the General Court of the European Union. The General Court said that a globalassessment of the likelihood of confusion in relation to the design marks inissue must be based on the overall impression given by the marks, bearing inmind, in particular, their distinctive and dominant components. The perception of the marks by the averageconsumer of the goods in question plays a decisive role on the globalassessment of the likelihood of confusion. In this regard, the average consumer normally perceives a mark as awhole and does not proceed to analyze its various details.
TheGeneral Court found that difference between two and three stripes placed on ashoe was not sufficient to affect the similarities arising from theconsideration of the marks in issue and from their position on the side of theshoe. As a result, the appeal wasallowed and the decision of the Board of Appeal set aside.
The Court of Justice ofthe European Union
ShoeBranding then appealed from this decision to the Court of Justice. The court agreed that the assessment in thecase must be based on the overall impression given by the marks, bearing inmind, in particular, their distinctive and dominant components. They also agreed that minor differencebetween the marks would not be noticed by consumers having an average level ofattention and would not influence the overall impression of the respectivemarks. As a result the appeal wasdismissed.
The Canadian Position
InJuly of 2015 we discussed a decision of the Federal Court where there was anissue between Adidas and the owner of a trademark application for a trademarkthat featured a single stripe. In thatcase the judge considered the matter from the point of view of an averageconsumer as a matter of first impression. Both the Opposition Board and the trial judge found there was asufficient difference between the respective marks to find no likelihood ofconfusion.
Notwithstandingthis result, it is clear that it is a matter of law. In Canada the trademarks in issue must beconsidered as a whole as they are perceived by a mythical consumer, whonormally makes up the market. It is nota correct approach to put the trademarks side by side or to break them intotheir components and make a careful comparison in order to observe similaritiesand differences.
Comment
Itappears that the approach to the issue of confusion is relatively consistent inboth Canada and the European Union. However,the fact remains that trademark cases are driven by their facts and theapplication of the relevant principles can be problematic.
John McKeown
Goldman SloanNash & Haber LLP
480University Avenue, Suite 1600
Toronto,Ontario M5G 1V2
Direct Line:(416) 597-3371
Fax: (416)597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legaladvice as individual situations will differ and should be discussed with alawyer.
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