Brand news: new landmark decisions
Brand news is very hectic at the moment. For example, Adidas has seen its figurative mark "Three stripes" annulled by the Court of First Instance of the European Union. Across the Atlantic, the Supreme Court has ruled on the fate of the FUCT trademark. The American judges found that the provision prohibiting vulgar and scandalous trademarks was unconstitutional.
United States: ban on vulgar trademarks is unconstitutional
A few months ago, we were talking about the FUCT trademark case. On Monday, June 24, the United States Supreme Court ruled on this case. The supreme judges voted, by a majority of 6 to 3, to overturn the federal law that prohibited the registration of immoral or scandalous trademarks. For the Court, the provision was contrary to the 1er Amendment of the US Constitution, which protects freedom of expression.
The case involved a clothing line, created by an artist and sold under the name "FUCT". The line consisted mainly of clothing with parodic slogans, most of which were anti-religious or anti-government. The US Trademark Office (USPTO) had rejected the trademark application on the basis of its vulgarity (the term being pronounced in the same way as the term "fucked").
An expected decision
The Supreme Court has recognized the vulgarity of the mark. But the judges ruled that the law was unconstitutional because it "disadvantaged certain ideas. Justice Elena Kagan noted that the USPTO has validated brands with an anti-drug message, but denied protection to "Marijuana Cola". Similarly, pro-religious trademarks have been registered, but not "Madonna" for wine.
Kagan concludes by indicating that judging which ideas are "immoral or outrageous" is highly subjective and potentially discriminatory. This is what makes the provision of the Lanham Act unconstitutional. In a similar case in 2017, the Supreme Court struck down another provision of the Act, which prohibited the registration of "disparaging" trademarks. For the judges, "offense is a point of view" protected by the First Amendment.
Europe: Adidas' three stripes are not a brand name
The Court of First Instance of the European Union (CFI) ruled on the validity of the three-stripe mark on 19 June last.. This decision is part of a case between the German sports equipment manufacturer and the European Intellectual Property Office (EUIPO).
In 2013, Adidas filed the following application for a European figurative mark for goods in class 25:
This mark was described as follows: "The mark consists of three parallel equidistant strips of equal width applied to the product in any direction. »
The trademark was then registered by EUIPO in May 2014. However, in December of the same year, the Belgian company Shoe Branding Europe BVBA filed an application for a declaration of invalidity against the trademark on the grounds that it was not distinctive. The EUIPO accepted the application and cancelled the trademark.
Adidas had defended itself by invoking the acquisition of distinctiveness through use. The presence of bands has been present in Adidas products since its origin in the 1940s.. The shoes were then handmade by Adolf Dassler (the founder who gave his name to the brand). He reinforced the seams with three vertical bands, also made of leather: these are the famous "three bands". The German company also argued that this was a design trademark, not just a figurative trademark.
An "ordinary" and "too simple" figurative mark
This reasoning was not followed by the court, which considered the mark to be "extremely simple". The judges also rejected the majority of the evidence provided by Adidas.
According to the judges, "since the mark at issue consisted of three black stripes on a white background ..., evidence in which the colour scheme was reversed, that is, evidence showing white (or light) stripes on a black (or dark) background" should be excluded. Finally, the Court also rejected a number of market studies provided by Adidas, as they had "been carried out in relation to signs which are not broadly equivalent to the registered form of the mark in question".
The Court dismisses Adidas' appeal in its entirety. However, the equipment manufacturer retains the possibility of appealing to the ECJ. However, it seems to us preferable to renounce this trademark and to make a new application that really corresponds to the use of the trademark.
This decision illustrates the dangers of a rough registration of a figurative trademark. To avoid making the same mistakes, have specialized agents accompany you to your depository..