Adidas Prevails in Japanese Trademark Fight Over

Adidas has garnered itself a reputation for being particularly litigious when it comes to its famed three-stripe trademark, and it is proving just as unwelcoming of plays in its brand name as well. The German sportswear giant does not sell products for pets with its name on them, and it does not want you to either. That was the general takeaway when adidas initiated a trademark fight before the Japan Patent Office (“JPO”) early this year, asking the national intellectual property body to cancel a pending trademark application for the word “adidog” for use on clothing for dogs.

In its opposition filing in January, as first reported by Osaka-based attorney Masaki Mikami, adidas pointed to Article 4(1)(xv) of the Japan Trademark Law, which prohibits the registration of a trademark that is likely to cause confusion amongst consumers as to the source of products bearing the mark, in furtherance of its effort to have the pending “adidog” application tossed out. Adidas claimed that due to the high degree of similarity between its famous, trademark protected-name and the “adidog” mark, consumers would be likely to think that it was affiliated with or otherwise endorsed the use of the “adidog” mark when that is not the case.

Adidas asserted that such consumer confusion would be bolstered due to the significant level of consumer awareness in connection with the adidas brand across the globe due to adidas’ consistent and exclusive use of its trademark-protected name in Japan for nearly 50 years, as well as “the close relatedness/proximity of goods in question,” and the JPO agreed, thereby, dismissing the “adidog” application.

Siding with adidas, the JPO’s Opposition Board held that it is “unquestionable that trade name ‘adidas’ has acquired a remarkable degree of reputation [in Japan] well before the filing date of opposed mark as a result of continuous use on sportswear and marketing activities in Japan since 1971.” The trademark body further stated that not only is the “adidog” mark “similar to ‘adidas’ [in] appearance and sound,” the products that are being offered using the “adidog” name is not markedly different from the products adidas’ sells.

“Clothing for pets is one [type] of fashion item consumed by the general public. Sportswear is also consumed by the general public not only for exercise use but also fashion items,” the Opposition Board stated. With that in mind, “It becomes apparent that distributors of sports gears, apparels, bags, and shoes also deal with clothing for pets nowadays,” meaning that both types of goods “shall be closely related.”

Adidas’ win comes after it initiated a separate proceeding against adidog last year when the Japanese company filed to register a trademark consisting of three diagonal parallel dog bones. The sportswear giant similarly prevailed in that matter on almost exactly the same grounds, namely, that adidas maintains famous trademarks in Japan, the three bones design “visually resembles” adidas’ three-stripe trademark, and modern distributors of sportswear, apparel, footwear, and accessories also commonly deal in pet clothing and accessories, as well.  

The win for adidas comes shortly after Balenciaga initiated a trademark fight over a petwear company’s “Pawlenciaga” application for registration, and in the midst of menswear site Hypebeast filing suit against an unrelated dog-centric company called Hypebeast Pets.

Source：www.thefashionlaw.com
Editor：Vapor