In Adidas AG v. Globe International Nominees Pty Ltd
., 2015 FC 443, the Federal Court of Canada upheld a decision of the Registrar of Trade-marks rejecting oppositions by Adidas to two-stripe shoe designs that bore similarity to Adidas’s famous three-stripe design. The marks at issue are shown below:
Applied-for marks of Globe International Nominees Pty Ltd
Registration of Adidas AG
The Registrar found that there was “dissimilarity in the overall appearance of the Marks.” On appeal, Adidas challenged the Registrar’s findings on degree of resemblance between the marks, and also appealed on the basis that the Registrar did not properly consider the fame of the Adidas marks. Adidas also filed additional evidence regarding overlap in the channels of trade and likelihood of confusion. The respondent did not file any additional evidence.
The Court acknowledged the fame of Adidas’s three-stripe design, stating: “[t]here is no question that Adidas has established a very well-known, if not famous, reputation in the 3-Stripes Design as applied to footwear in Canada.” Despite acknowledging this fame, however, the Court focused on whether the public would likely be confused and concluded there is “sufficient difference” between Adidas’s three-stripe mark and the two-stripe designs. As a result, the impact of the overall visual presentation of the Globe footwear and Adidas footwear were found not to result in any likelihood of confusion, affirming the decision of the Registrar.
With respect to fame and notoriety, the Court offered the following observations:
Fame and notoriety associated with a trademark can be a double-edged sword for a trademark owner. On the one hand, an enhanced reputation may provide the owner with extended protection for the trademark beyond the goods and/or services covered by a registration for the marks when the relevant public is likely to believe that the use of that mark, or a similar mark, on those other goods and/or services indicates that they probably emanate from the same source.
On the other hand, when a trademark becomes so well known or famous that the public is so familiar with it and readily identifies that trademark as used in the marketplace on goods and/or services, it may be that even as a matter of first impression, any differences between the well-known mark and another party’s trademark, as used on the same or similar goods and/or services, may serve to more easily distinguish the other party’s trademark and reduce any likelihood of confusion.
Finding no likelihood of confusion, the appeal was dismissed and costs were awarded to Globe International Nominees Pty Ltd. This case shows the Court’s willingness to consider the visual overall comparison of the marks in the confusion analysis, as well as highlighting that the fame of a mark can be a double-edged sword.
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© 2015 International Trademark Association