Trademark Infringement

Following a Trademark Infringement battle loss over its three-stripe logo just a few months ago to Shoe Branding Europe BVBA; Adidas has once again lost its rights to prevent others from registering 2-stripe trademarks, at least not in Japan. The Japan Patent Office (JPO; the national Intellectual Property (IP) body of Japan) has recently dismissed Adidas’ attempt to invalidate Marubeni Footwear’s Trademark Registration for a diagonal 2-stripe trademark.

Last year in April, Adidas went to the JPO for getting Marubeni’s registration canceled claiming, that by registering the 2-stripe trademark, the Tokyo-based footwear brand wants to take advantage of its well-acclaimed and iconic 3-stripe registered trademarks. In its filing, the German sportswear giant also stated that Marubeni’s 2-stripe trademark would give the buyers the same impression as to its 3-stripe trademarks since each stripe is in the same direction, and of the same shape and width, besides the stripe count difference. For the one stripe difference, Adidas argued by saying that it has been substantially using its famed 3-stripe mark since the early 1950s, that too, in various configurations, length, and colors, and an average customer would associate Marubeni’s 2-stripe mark with its 3-stripes. Furthermore, Adidas also asserted that the space between the stripes of different colors in the 2-stripe mark could easily appear to be three stripes, which it fears the relevant customers would confuse for its shoes.

However, the JPO’s Opposition Board felt differently in this matter and gave a judgment in favor of Marubeni by saying that although there is a high degree of popularity and reputation associated with Adidas’ 3-stripe trademark, an average customer shall never mistake two stripes for three stripes while purchasing shoes. Coming to Adidas’ argument of the use of two stripes with a contrasting space, which may appear to be three separate stripes, the Opposition Board was unconvinced and said that the mark has only two stripes and the issue of spacing is not relevant in this particular case.

Keeping everything in mind, the Opposition Board dismissed Adidas’ Trademark Opposition proceedings and held that Marubeni’s trademark registration would continue to remain valid.