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 1^er Amendment to the US Constitution, protecting freedom of expression. The case concerned a clothing line created by an artist and sold under the name "FUCT". The line essentially concerned clothing bearing parody slogans, mostly anti-religious or anti-government. The U.S. Trademark Office (USPTO) rejected the trademark application on the grounds of vulgarity (the term is pronounced the same as "fucked").

An expected decision

The Supreme Court recognized the vulgar nature of the trademark. But the justices ruled that the law was unconstitutional because it "disfavors certain ideas". Judge Elena Kagan recalls that the USPTO has validated trademarks 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 pointing out that judging which ideas are "immoral or scandalous" is highly subjective and potentially discriminatory. This is what makes the Lanham Act provision unconstitutional. In 2017, in a similar case, the Supreme Court struck down another provision of the law, 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 had filed the following European figurative trademark application, for goods in class 25: This mark was described as follows: "The mark consists of three equidistant parallel stripes of equal width, applied to the product in any direction. The trademark had subsequently been registered by the EUIPO in May 2014. But 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 this request and cancelled the trademark. Adidas defended itself by invoking the acquisition of distinctive character 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 consists of three black stripes on a white background [...], the evidence in which the color scheme was reversed, namely that showing white (or light) stripes on a black (or dark) background" had to be discarded. Finally, the Court also rejected several market studies provided by Adidas, as these had "been carried out in relation to signs which are not broadly equivalent to the registered form of the mark at issue". The court dismissed Adidas' appeal in its entirety. However, Adidas still has the option of appealing to the CJEU. However, we think it would be preferable to abandon this trademark, and to file a new application that really corresponds to the use of the trademark. This decision clearly illustrates the dangers of an approximate registration of a figurative trademark. To avoid making the same mistakes, have specialized agents accompany you to your depository..