Mark v Marc: Adidas accuses Marc Jacobs of trade mark infringement

Mark v Marc: Adidas accuses Marc Jacobs of trade mark infringement

Published:

Author: Laura Harper

Applies to: Worldwide

Adidas AG recently filed a claim against Marc Jacobs International LLC in the US Federal Court for allegedly infringing its iconic Three-Stripe Trade Mark.

The claim relates to certain apparel in the 'Marc by Marc Jacobs' Autumn/Winter 2014 collection which features a four stripe design along the sleeves. Adidas claim that in adopting the four stripes, Marc Jacobs has made its Marc apparel confusingly similar to its iconic Adidas sports wear.

Tell me more...

Adidas is the owner of a portfolio of registered trade marks for its three stripes logo (Three-Stripe Mark). The Three-Stripe Mark is registered in class 25 (amongst other classes) in respect of use on sports and leisurewear, namely shirts and expressly in relation to 'three parallel bands positioned along the length of each sleeve of a shirt.' Adidas is also the registered proprietor of the word trade mark THREE STRIPES in (amongst other classes) class 25.

Earlier this year, Adidas filed a claim against Marc Jacobs alleging that a jacket designed and sold by Marc Jacobs featuring four parallel stripes on its sleeves infringed its Three-Stripe Mark. In its claim for trade mark infringement, Adidas alleges that the Marc Jacobs 'use of confusingly similar imitations of Adidas' 'Three-Stripe Mark' is likely to deceive, confuse, and mislead purchasers and prospective purchasers into believing that the apparel sold by Marc Jacobs is manufactured by, authorized by, or in some manner associated with Adidas, which it is not' and that 'the likelihood of confusion, mistake, and deception engendered by Marc Jacobs' infringement and dilution of Adidas' mark is causing irreparable harm to the goodwill symbolised by the Three-Stripe Mark and the reputation for quality that it embodies.'

Grounds for trade mark infringement claimed:

(i) Confusingly similar trade marks for identical goods

Adidas has claimed that Marc Jacobs created and sold apparel bearing confusingly similar imitations of its Three-Stripe Mark. In particular, Adidas suggests that the Marc Jacobs clothing is similar to its premium Y-3 collection which it created in collaboration with designer Yohji Yamamoto. The Y-3 collection contains apparel bearing the Three-Stripe Mark on various parts of the garments including the shoulders, the front, back or on the sleeves. The Y-3 apparel is sold by Adidas through similar retailer outlets to those which stock and sell Marc Jacobs collections. Consequently, Adidas claims that consumers are likely to be confused as to the origin of the designs.

(ii) Dilution of the reputation of the Three-Stripe Mark

Adidas states that it has invested millions of dollars in marketing its Three-Stripe Mark which has resulted in a significant global reputation, Adidas claims that 'the public recognises and understands that the Three-Stripe Mark distinguishes and identifies Adidas merchandise.' The famous nature of the brand is evidenced by reference to Adidas' sponsorship of celebrities such as Katy Perry, Kanye West and David Beckham.

Under US law (which is broadly similar to UK law in this respect), a registered trade mark owner may bring a claim for trade mark infringement against a third party if it has used its trade mark in commerce in way that is likely to cause, or has caused, dilution of its trade mark by blurring or tarnishing it. In the UK, similar grounds for a claim are that 'use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.' As is the case under UK law, under this head of claim, the trade mark owner does not need to demonstrate that the use of the trade mark has caused actual or likely confusion in the minds of the public. Adidas alleges as a result of its significant reputation, the unauthorised use of the Three-Stripe Mark by Marc Jacobs has been detrimental to the Three Stripes Mark and/or diluted the mark's distinctiveness, particularly as Adidas claim that the Marc Jacobs apparel does not meet their own quality standards. Therefore, even if the court finds that Marc Jacobs' 4 stripes mark is not confusingly similar to the Three-Stripe Mark (see point (i) above), it may still find that the two marks are so similar that the Three-Stripe Mark has been diluted.

Adidas is seeking an injunction to stop Marc Jacobs from using its Three-Stripe Mark and also to prevent Marc Jacobs from manufacturing, distributing, marketing and selling the four stripe pieces from its A/W 2014 collection or any other apparel that would infringe the Three Stripes Mark. They have also asked for an order requiring Marc Jacobs to deliver-up the pieces bearing the Three Stripes Mark to Adidas in order that they can be destroyed. In addition to this, Adidas is asking for damages for an unspecified amount and for Marc Jacobs to give up all profits received from the sale of the garments.

How does this case affect me?

Although a decision has yet to be reached, this could lead a court to decide that Marc Jacobs' use of the mark creates a likelihood of confusion in the minds of the public and consequently that the Three-Stripe Mark has been infringed. The potentially detrimental use of the mark by Marc Jacobs (given the significant reputation of the Three-Stripe Mark) will also be decided by the court.

The case highlights the importance of avoiding the use of pre-existing marks in order to help prevent your business from becoming involved in costly trade mark litigation and, importantly to enable you to build a strong and distinctive brand.

To help avoid such problems, you should always conduct adequate searches of the relevant trade mark registers prior to selecting a trade mark.

This case also demonstrates the breadth of protection which a trade mark registration affords to a brand owner to enable them to protect their significant investment in developing and marketing a global brand.

If you would like further information on this case or assistance with a trade mark or branding query then please do get in touch.

About the Author

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Laura Harper

Partner

03700 86 5881

Laura is an experienced intellectual property lawyer. She helps businesses and professionals, reliant upon the intellectual property which they produce, to protect and commercialise their products and services. She is a leading professional advisor to businesses in the creative industries and digital sectors.

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