Adidas & Coca Cola: Two decisions of the EU courts dealing with the Community trade mark

By Gabriel M. Lentner

In an Order of the Court of 17 February 2016 in Case C-396/15 P Shoe Branding Europe BVBA v. adidas AG, the Court of Justice of the European Union decided that the sports company Adidas may oppose the registration, as a Community mark, of parallel stripes placed on the side of sports shoes.


Background & Facts

In 2009, Shoe Branding filed an application, pursuant to Regulation No 207/2009, for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (OHIM) for the mark depicted below:


Adidas opposed the registration of that mark, relying primarily on a Community figurative mark, registered on January 26, 2006, reproduced below:


The OHIM dismissed the opposition, after which Adidas sought annulment of OHIM’s decision before the General Court. The Court decided that the OHIM was incorrect in finding that the marks were visually dissimilar when the overall impression produced by the marks was, to a certain extent, similar given that there were elements clearly common to the two marks (parallel sloping stripes, equidistant, of the same width, contrasting with the base color of the shoe, placed on the outside of the shoe). In its order of February 17, 2016, the CJEU upheld the General Court’s judgment in favor of Adidas, holding that the difference between two and three stripes placed on a shoe is not sufficient to affect the similarities arising from the configuration of the signs at issue and from their position on the side of the shoe. The General Court took account of the difference in the length of the stripes resulting from their angle and found that that difference did not influence the overall impression produced (para 59).

Image Credit: © European Union,, 1998-2016.


The Coca-Cola Company v. The Office for Harmonisation in the Internal Market (Trade Marks and Designs)

In its Judgment of 24 February 2016 (Case T-411/14), the General Court of the EU dismissed an action brought by the Coca-Cola Company (Coca-Cola) seeking registration of a contour bottle without fluting as a Community trade mark, holding that the mark sought is devoid of distinctive character.


Background & Facts

In December 2011, Coca-Cola sought registration as a mark for the three-dimensional sign for, inter alia, metallic, glass and plastic bottles depicted below:


In March 2014, the OHIM rejected the application on the ground that the mark sought was devoid of any distinctive character required for registration under the Community trade mark regulation (Regulation (EC) No 207/2009) in respect of the goods covered by the application, and dismissed the argument that the mark sought should be regarded as a natural evolution of its famous contour bottle with fluting. Coca-Cola sought an annulment of this decision, but the General Court declined and upheld OHIM’s conclusions, confirming that the characteristics of the desired mark are indistinguishable from other bottles available on the market. It further rejected Coca-Cola’s argument that the sign had acquired distinctive character through use.


Changes in the legal framework

The Community trade mark establishes a unitary right that is effective throughout the territory of the European Union. This right is conferred by registration with the “Office for Harmonisation in the Internal Market (Trade Marks and Designs)”. When Regulation (EU) 2015/2424 takes effect on Mar 23, 2016,, OHIM will become the EU Intellectual Property Office and the Community trade mark will be renamed the European Union trade mark. All existing Community trade marks and applications will automatically become EU trade marks and applications.

Image Credit: © European Union,, 1998-2016.