Four strikes and you're out: Adidas covering their bases with trade marks protection

William Van Caenegem, Violet Atkinson

Research output: Contribution to journalArticleResearch

Abstract

Takeaway tips
• When considering whether a registered mark is
used “as a mark” or merely as a decorative feature,
evidence that consumers have become accustomed
to seeing trade marks in the same position on
products of that kind will support a finding of use
as a mark.
• Even if the registered trade mark consists of three
stripes, and is well-known among consumers, four
stripes can be held to be deceptively similar if they
are placed in a similar configuration.
• It is the similarity in the overall configuration of
the stripes rather than the number that is crucial in
the test of deceptive similarity.
• In essence, the test of deceptive similarity requires
a comparison of the marks themselves, but “relevant
context” can also be taken into account, in
particular what the marks are applied to, and the
circumstances in which the marks will be observed
and compared.
• Survey evidence that is not “ecologically valid”
and evidence tending to show only a general
intention to “sail close to the wind” is of little
assistance to the court.
Original languageEnglish
Pages (from-to)122-127
Number of pages6
JournalAustralian Intellectual Property Law Bulletin
Volume30
Issue number6
Publication statusPublished - Jul 2017

Fingerprint

Adidas
Trademark
Essence

Cite this

@article{5741e6ffc2e24ab99d2d5f8642a0bb8f,
title = "Four strikes and you're out: Adidas covering their bases with trade marks protection",
abstract = "Takeaway tips• When considering whether a registered mark isused “as a mark” or merely as a decorative feature,evidence that consumers have become accustomedto seeing trade marks in the same position onproducts of that kind will support a finding of useas a mark.• Even if the registered trade mark consists of threestripes, and is well-known among consumers, fourstripes can be held to be deceptively similar if theyare placed in a similar configuration.• It is the similarity in the overall configuration ofthe stripes rather than the number that is crucial inthe test of deceptive similarity.• In essence, the test of deceptive similarity requiresa comparison of the marks themselves, but “relevantcontext” can also be taken into account, inparticular what the marks are applied to, and thecircumstances in which the marks will be observedand compared.• Survey evidence that is not “ecologically valid”and evidence tending to show only a generalintention to “sail close to the wind” is of littleassistance to the court.",
author = "{Van Caenegem}, William and Violet Atkinson",
year = "2017",
month = "7",
language = "English",
volume = "30",
pages = "122--127",
journal = "Australian Intellectual Property Law Bulletin",
issn = "1035-1353",
publisher = "Lexis Nexis",
number = "6",

}

Four strikes and you're out : Adidas covering their bases with trade marks protection. / Van Caenegem, William; Atkinson, Violet.

In: Australian Intellectual Property Law Bulletin, Vol. 30, No. 6, 07.2017, p. 122-127.

Research output: Contribution to journalArticleResearch

TY - JOUR

T1 - Four strikes and you're out

T2 - Adidas covering their bases with trade marks protection

AU - Van Caenegem, William

AU - Atkinson, Violet

PY - 2017/7

Y1 - 2017/7

N2 - Takeaway tips• When considering whether a registered mark isused “as a mark” or merely as a decorative feature,evidence that consumers have become accustomedto seeing trade marks in the same position onproducts of that kind will support a finding of useas a mark.• Even if the registered trade mark consists of threestripes, and is well-known among consumers, fourstripes can be held to be deceptively similar if theyare placed in a similar configuration.• It is the similarity in the overall configuration ofthe stripes rather than the number that is crucial inthe test of deceptive similarity.• In essence, the test of deceptive similarity requiresa comparison of the marks themselves, but “relevantcontext” can also be taken into account, inparticular what the marks are applied to, and thecircumstances in which the marks will be observedand compared.• Survey evidence that is not “ecologically valid”and evidence tending to show only a generalintention to “sail close to the wind” is of littleassistance to the court.

AB - Takeaway tips• When considering whether a registered mark isused “as a mark” or merely as a decorative feature,evidence that consumers have become accustomedto seeing trade marks in the same position onproducts of that kind will support a finding of useas a mark.• Even if the registered trade mark consists of threestripes, and is well-known among consumers, fourstripes can be held to be deceptively similar if theyare placed in a similar configuration.• It is the similarity in the overall configuration ofthe stripes rather than the number that is crucial inthe test of deceptive similarity.• In essence, the test of deceptive similarity requiresa comparison of the marks themselves, but “relevantcontext” can also be taken into account, inparticular what the marks are applied to, and thecircumstances in which the marks will be observedand compared.• Survey evidence that is not “ecologically valid”and evidence tending to show only a generalintention to “sail close to the wind” is of littleassistance to the court.

M3 - Article

VL - 30

SP - 122

EP - 127

JO - Australian Intellectual Property Law Bulletin

JF - Australian Intellectual Property Law Bulletin

SN - 1035-1353

IS - 6

ER -