You know the slightly ironic saying “More stripes, more adidas”? I’m sure you do... And the Czech courts know it too! So well, in fact, that it made it into the reasoning of a judgment. If you want to know the outcome, read the article commenting on the court battle of the stripes.
It looks like better (more secure) times are ahead for IP owners. The judgment of the High Court in Prague, case no. 3 Co 63/2022, which again set the rules for assessing the similarity, or the likelihood of confusion, of trademarks, has perhaps not escaped the attention of any IP litigator.
In that litigation, adidas AG (“adidas”) sought, inter alia, a declaration that the four-stripe sneakers seized by the customs authority infringed its trademarks, primarily the three-stripe trademark which had been declared a famous trademark by the Industrial Property Office.
In the proceedings, adidas argued that the 4 stripes on the seized sneakers was confusingly similar to their own trademarks, was liable to give consumers a false impression of the manufacturer of the goods, and was detrimental to the distinctive character of the adidas trademarks. Adidas also pointed out that the four stripes at issue were used on the same kind and type of product, the overall appearance of which was also very similar to authentic adidas footwear, which substantially increases the likelihood of confusion on the part of the public.
The defendant argued (how else) in the proceedings that the seized goods do not infringe adidas’ trademark rights because the consumer can count to four and is able to distinguish between 3 and 4 stripes. The defendant concluded that their sneakers did not meet the test of the Trademark Act because the 4 stripes were not identical to the adidas trademark and there was no likelihood of confusion on the part of the public.
The court initially dismissed adidas’ claim. With its bold conclusions, it must have surprised, and perhaps even frightened a little bit, not only the adidas company itself and its lawyers, but everyone who is aware that there is such a thing as a trademark, and how it works. In its reasoning, the court stated, inter alia, that the dominant element of the adidas trademark (i.e., 3 stripes) is not included in the defendant’s sign (in the 4 stripes).
The court also highlighted the different colour design of the defendant’s sign compared to the black and white adidas trademark, as well as partial differences in the non-distinctive elements. Finally, the court could not help referring to the saying “more stripes, more adidas” which, however, according to the court’s logic (by its meaning and irony), inherently excludes any possibility of confusion of the plaintiff’s trademarks.
A brief comment on the quoted conclusions of the trial court for the lay reader – four stripes naturally do contain three stripes (but that is simple logic, not law); the protection afforded to a trademark in black and white also extends to all its colour mutations (one would think that the court would know that too); the average consumer perceives a trademark as a whole and does not analyse its details; if the adidas trademark has become part of a notorious phrase, it is obvious that adding a fourth stripe (or a fifth, or taking away one) is a textbook example of flagrant trademark infringement. Indeed, a direct proportionality applies here – the better known the trademark, the broader the protection granted.
Fortunately, the High Court in Prague upheld the appeal lodged by adidas and returned the decision-making practice concerning the assessment of trademark rights on the right track. It very considerately assessed that the trial court had departed from the conclusions drawn from established domestic case law in similar cases and had turned the criteria derived from the CJEU case law upside down.
The summary of the High Court at the end of the reasoning of the judgment, where it reiterated the basic principles that govern (or at least should govern) all trademark litigations, is crucial for any future disputes – if trademarks have a reputation, they are more distinctive and enjoy greater protection. When assessing confusion, the primary consideration must be the identical elements and not the differences of the signs being compared.
The role of IP litigators is to consistently remind the courts of these principles and not to be put off by their sometimes eccentric reasoning, which ultimately leads to absurd conclusions. This was achieved perfectly in this case, and we are thus grateful to adidas not only for the Superstar sneakers, but also for the Superjudgement.