Three stripes, the “trademark” of Adidas, has been held as no longer synonymous or distinct enough to be immediately associated with the brand. Adolf Dassler, the company’s founder, previously coined it as “the three stripe company” — designs for its shoes always incorporate three stripes and Dassler’s company even bought the rights to the three stripes from a Finnish sports brand, Karhu, in the 1940s. However, the EU does not agree – it held this week that Adidas does not have exclusive rights to three stripes as the company has failed to prove that the mark has acquired “distinctive character”.
The case followed a long-time disagreement with a Belgian shoe company and reinforces decades of intellectual property (IP) law, warning brand owners to ensure their logos and trademarks — their assets — are distinctive and capable of worldwide protection.
The Adidas case is surprising but not shocking — Heineken has faced similar battles around its red star (condemned not only for trademark conflict but also for an inference of communism). Synonymous with Heineken since the 1880s, the company may no longer be allowed to use the red star alone in future; however, its brand is protected by a red star used alongside the word ‘Heineken’.
A logo is a corporate identity — it is essential to ensure it is distinguishable and unique. It is a powerful marketing tool (think Coca-Cola) and undoubtedly worthwhile getting its registration and protection right.
So, in a world where brands are people as well as inanimate objects; where brand dilution is a real threat not just from copycat manufacturers in China, but via a plethora of online and social platforms; where the word ‘kimono’ is no longer associated with a generic, Japanese garment, but can be registered as the name of a celebrity’s underwear brand — what can trademark owners do to protect themselves from identity theft and abuse?
Create a unique logo
It can be a symbol, an image, a shape and even a word, as long as that word in itself is not immediately descriptive. For a phone brand, Orange works, as does a blackberry icon – the word ‘telephone’ does not.
Add your brand name to that logo
Trademarks are more easily approved for registration, in my experience, if the brand name is embossed or connected. Symbols alone are more usually open to criticism, exactly like Adidas’ three stripes. Adidas can use the stripes with the name Adidas or with their other registered symbols, but the stripes alone are not acceptable.
Make sure your logo is distinctive
Heineken has a red star, as does fashion brand Macy’s, as does shoe brand Converse — but the typeface in the logo is different across all three, as is the colour of the wording. They are distinctive and could not be confused.
Apply for the trademark asap
You can do this via the Intellectual Property Office (IPO), and the World Intellectual Property Office (WIPO). Check and double check no one has a similar mark in a similar category. The process is straightforward – and while it can be expensive for a worldwide audience, remember it is brand protection – it has balance sheet value for your business. Remember to choose your appropriate categories, or ‘classes’, for registration, which are listed by the WIPO — there are many overlapping categories, and brands should register in as many as appropriate.
Register your brand name in multiple places
This will give your company double and triple protection — so as well as registering the logo, register the company name and buy the online domain (the website url) of the same name.
Use it or lose it
And finally, the old adage of “use it or lose it” applies to trademarks. Lack of use can cause a lapse of the mark itself and absolutely exposes it to challenge by a new registrant.
Tessa Laws is a corporate and business lawyer, and a partner in the London office at commercial law firm, Acuity Law.