Does use of a trade mark within the UK constitute valid use within the EU to evidence enhanced distinctiveness of an EU trade mark?
The judgement of the Shopify vs Shoppi case has important implications for UK trade mark owners.
A global sports retailer has sued a well-known US fashion chain for selling children’s clothing which allegedly infringes their trade mark.
Adidas raised claims that fashion franchise, Forever 21, sold children’s film-themed jumpers with stripes on the shoulders and arms, replicating the well-known three-stripe trade mark.
The trial took place on August 17th 2015 at the US District Court for the District of Oregon, where Adidas claimed that Forever 21 is liable for both trade mark infringement and counterfeiting.
The jumpers in question have images of animated characters from the “Teenage Mutant Ninja Turtles” and “Looney Tunes” children’s television shows.
The court document claimed that the sale of the garments is “likely to cause confusion” and “deceive the public regarding its source”.
Adidas also stated that the jumpers sold by Forever 21 “dilute and tarnish the distinctive quality of Adidas’s three-stripe mark”.
The three-stripe trade mark has been established since 1952, originally used on Adidas footwear, but later expanding to their clothing range.
The sportswear company suggested that the brands popularity has been enhanced by the endorsement of celebrities including pop sensation, Katy Perry and super star rapper, Kanye West.
Adidas stated that the promotion and distribution of the allegedly infringing clothing is a “blatant disregard” of the company’s trade mark rights and is requesting any damages awarded to be tripled to reflect Forever 21’s “willful” infringement.
With the trial still on-going, and Forever 21 yet to hit back, it will be interesting to see how the fashion chain responds to the claims made by Adidas.
If you have a registered trade mark, and are concerned it may be at risk of infringement, please click here to contact us. One of our highly qualified trade mark attorneys will be able to advise you on how to deal with such an infringement.