Adidas was able to put its issues on the 3-stripe trade mark litigation aside and leave Addicted Original Ltd going cold turkey with successful trade mark invalidation.
In August 2017, Addicted Original Ltd (“Addicted”) registered a figurative trade mark depicting, in black and white, a symmetrical cannabis leaf with five horizontal black lines intersecting the lower section above the word in a stylised font “addicted”. The trade mark was registered in classes 25, 35, 36 and 42.
Adidas AG (“Adidas”) applied to have the mark declared invalid under section 47 of the Trade Marks Act 1994 (the “Act”). Adidas relied on the UK trade mark registration number 1154365 which is the well-known Adidas Originals logo of a black and white symmetrical leaf with three points and three horizontal lines intersecting the lower section, above the word in a stylised font “adidas” (the “trefoil device mark”).
The application was based upon the following sections of the Act: 5(2)(b) (the likelihood of confusion argument); 5(3)(a) (the unfair advantage argument); 5(4)(a) (the passing off argument); 3(3)(a) (the public policy argument); and 3(6) (the bad faith argument).
Evidence of use and reputation of TM provided by Adidas
The only evidence produced was the witness statement provided by Adidas. This witness evidence included substantial background in relation to the history of the trefoil mark, its use and reputation.
It was noted by the Hearing Officer, as provided in the evidence, that “Between 1960 and 1988 between 75% and 80% of all athletes competed at the Olympic Games wearing products made by the applicant and by 1974, 75% of all players participating in the Football World Championship in Germany wore clothing from the applicants range.” It was also submitted by Adidas that a number of stores had been opened which were dedicated to Originals products only, with a London store opening in 2014. Addicted did not provide evidence on its distribution arrangements.
Adidas also produced worldwide turnover figures for 2012 – 2016 as well as the Forbes magazine article that ranked it 3rd in the World’s Most Valuable Sports Brands 2015. Further evidence was provided on the advertising campaigns of the Original products that had included celebrities such as David Beckham, Katy Perry, Pharrell Williams and Rita Ora. As a result the Hearing Officer was able to find (unsurprisingly) that Adidas invested heavily in promoting its brand through high-profile celebrities.
Comparison of the marks
The visual, aural and conceptual similarities were considered by the Hearing Officer. Visually it was considered that both words began with the letters “AD”, that the same font had been used and that manner in which the marks are set out, with the device above the wording, is the same. Given the differences in the words and each of the leaf devices however, it was considered that there was a low to medium degree of visual similarity.
On the basis of the differences between the words, there was considered to be a low level of aural similarity. Conceptually the marks were considered to be dissimilar on the basis that the marijuana leaf was quite distinct from the trefoil device and the difference between the words.
Section 5(2)(b) – likelihood of confusion
It was held that there would be no likelihood of direct confusion on the basis that it would be unlikely for an average consumer to mistakenly recall one mark for the other. On indirect confusion, given the differences between the mark, it was held that there was no reason the average consumer would assume that the two marks originated from the same or economically linked undertaking, despite there being mere association. Adidas lost on this ground.
Section 5(3) – unfair advantage
Although it was noted that consumers may consider the mark to be a parody of the trefoil mark, the Hearing Officer held that “such connection alone in the mind of the consumer is enough to cause detriment to the applicant’s reputation”.
The fact that the addicted mark had been base on the trefoil mark was not lost on the hearing officer who held that, due to the sufficient familiarity created on this basis, there would be “an unfair advantage and commercial leg up”. Adidas was successful on this ground.
Section 5(4)(a) – passing off
Based on the finding that there was no likelihood of confusion, despite the difference in tests between misrepresentation and the likelihood for confusion and on the basis that the mark would only bring to mind the trefoil mark, it was held that this it would not lead to misrepresentation. As a result Adidas lost on this ground.
Section 3(3)(a) – public policy
A registered trade mark may be declared invalid if it has been registered in breach of s.3(3)(a) of the Act, which states: (3) A trade mark shall not be registered if it is – (a) contrary to public policy or accepted principles of morality. On the basis that for some consumers, the mark would have conveyed a “clear message relating to the addiction of illegal drugs”, it was held that the registration of the mark undermined the principles of accepted social values. As a result the application on this ground was successful.
Section 3(6) – bad faith
It was not considered necessary to determine whether there was success on this ground on the basis that it stood or fell with the application based on section 5(3). As the Hearing Officer had already found in favour of Adidas on two grounds of invalidity, bad faith was not considered.
Adidas was able to give Addicted a dose of solid trade mark protection by providing sufficient evidence to obtain a successful result.