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Protecting Your Brand – Adidas and Reebok Take Legal Action

Adidas and Reebok have together taken legal action against 53 e-commerce sites for trade mark infringement, counterfeiting and unfair competition.

The well-known sporting giants have alleged that the e-commerce sites have been “promoting, selling, offering for sale, and distributing goods bearing counterfeits” and imitations of the popular brands goods. Subsequently, the sporting giants have filed complaints to the US District Court as of 9 April 2018.

Both Adidas and Reebok have advocated that the infringements to their trade marks amount to “fraudulent conduct” and have condemned the behavior of the e-commerce sites as being “nothing more than illegal operations established and operated in order to infringe the intellectual property rights of others”.

If successful, the damages claimed by Adidas and Reebok would be likely to send a strong message to the offending e-commerce sites. The sporting giants have claimed damages of 2 million US dollars from each defendant for each counterfeit trademark used and product sold. In the interim, both companies have asked the Court to restrict any payments made to the e-commerce sites through third-party payment gateways, such as PayPal, as well as restrict their activity on social media platforms and the online marketplace.

Both Adidas and Reebok have multiple registered trade marks that protect their brand against others. For example, Adidas has over 90 individual trade marks registered in Australia alone. Similarly, Reebok has 46 registered trade marks in Australia. The importance of brand protection is evidently paramount to these successful companies.

This is not the first time that Adidas has taken action to defend their brand against other competitors in the market. Earlier this year an EU Court confirmed that Adidas was well within its rights to oppose the registration of two parallel stripes on shoes as an EU trade mark. The decision reaffirms two previous decisions made by the EU Intellectual property Office (EUIPO). In its reasoning, the court asserted that the Adidas brand had become synonymous with the three stripes, and that the rival shoe company would be taking unfair advantage of Adidas’ reputation. Adidas first initiated proceedings against the Belgian rival shoe company – Shoe Branding Europe – almost 8 years ago.

However, Adidas’ victory over Shoe Branding Europe may be short lived. The Belgian shoe company has taken issue with Adidas’ famous 3 stripe trade mark, initiating proceedings against Adidas back in 2014. Shoe Branding Europe argued in their submissions to EUIPO that the 3 stripes lack the “distinctiveness and source-identifying character” that is required for a trade mark to be valid and enforceable. The EUIPO agreed with the submissions put forward by Shoe Branding Europe, and the matter has been referred to an EU Court, with an expected hearing date later this year. To be continued …

Take-away points to consider

  • A registered trade mark will help to ensure your brand is legally protected.
  • Your trade mark should be as unique as possible to avoid another person challenging your mark.
  • Distinctiveness and an identifiable character are elements of a strong trade mark.
  • You are responsible for monitoring the way your trade mark is used and protecting your trade mark against infringement.
  • A good trade mark will prevent competitors from being able to successfully register a similar mark in the same category of goods or services.

Sam Gilbert, IP and Technology Consultant, B.A., LL.B  University of Technology, Sydney

For any more information on how to protect your brand, or to make an inquiry about a trade mark, please do not hesitate to get in contact with the team at W3IP Law on 1300 776 614 or 0451 951 528.

Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.

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