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Pacific Brands’ four stripes infringes Adidas’ three stripes
A recent judgment in the Federal Court of Australia (Adidas AG v Pacific Brands Footwear Pty Ltd (No 4)  FCA 1335) offers an interesting insight into the importance of protecting distinctive product designs as trade marks.
Since the 1950s, Adidas has sold their distinctive ‘three stripe’ design shoes in Australia. Adidas registered this three stripe design as a trade mark in Australia as early as 1957.
Between 2006 and 2010 Pacific Brands Footwear imported a range of shoes containing a four stripe design. Like the Adidas stripes, Pacific Brands’ shoes had their stripes applied to the side of the shoe. Adidas sued Pacific Brands for trade mark infringement.
Pacific Brands rejected the trade mark infringement claim, arguing that its four stripe design was not being used as a trade mark – i.e. not as an element of branding – but rather was just a pattern on their shoes with no ulterior marketing purpose. Pacific Brands Footwear also asserted that even if its four stripe designs were being used as a trade mark, they were not deceptively similar to the Adidas three stripe design.
Adidas maintained that the location of the stripes – on the side of Pacific Brands’ shoes – indicated that they were being used as a trade mark. Examples of how other brands placed their trade marks on the side of their shoes (such as the Nike ‘swoosh’ and the New Balance ‘NB’) were used to support this argument.
Adidas also argued that Pacific Brands’ used of the four stripe design was a deliberate strategy to ‘sail too close to the wind’ and therefore its conduct should be deemed to be infringing.
What was decided?
Ultimately, the Federal Court ruled partially in Adidas’ favour.
It was held that the distinctiveness of the Adidas three stripe design stemmed from not just the stripes themselves but their juxtaposition to the contrasting colour of the shoe to which they were applied. This distinction was important as it meant that the Pacific Brands shoes which had a four stripe design in a contrasting colour to that of the remainder of the shoe was held to be infringing whereas those where there was no contrast were held to not infringe.
While the Court held that Adidas had failed to lead any evidence of Pacific Brands’ intention to ‘sail too close to the wind’, it observed, in any event, that an intention to ‘sail close to the wind’ was not the same as an intention to infringe. So, even if Adidas could have shown such an intention it would not have assisted its case.
- Where an element of design is or becomes part of your brand, it should be registered as a trade mark.
- The fact that competing products might look similar does not automatically mean that there has been an intention to infringe. A trade mark owner will still need to prove, through evidence, that there was an intention to infringe. Further, an intention to ‘sail close to the wind’ is not the same as an intention to infringe or confuse consumers.
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