Adidas is the owner of trade mark rights worldwide for the well known three stripes logo. It is also known to be strong at enforcing its rights. Adidas was recently on the wrong end of a decision in a trial in New York against Thom Browne. Adidas sued Thom Brown alleging trade mark infringement of its three stripes mark by the use of a four stripe mark. The jury did not agree that there would be a likelihood of confusion. The trial was closely followed by the fashion industry and generated significant publicity. Mainly it seems the industry and its legal advisors were interested in seeing what the jury would decide on the question of likelihood of confusion. As such although Adidas were not successful the commentary from the industry around the decision was not particularly critical of Adidas for bringing the claim.
Sometimes rights have to be enforced even if ultimately you turn out to be on the wrong end of the argument. From the documents filed at the court in the Thom Browne case we can see that Adidas has filed over 90 lawsuits and has entered into more than 200 settlement agreements concerning the three stripe mark since 2008. With an enforcement programme that active there are bound to be some losses along the way and some cases that are a real headache.
What do you do then if shortly after an unsuccessful case the next potential trade mark conflict comes along and you think that you have a strong legal argument to oppose a application for a mark that is too close to yours? Adidas recently had to ask itself what it should do in the face of an application for a three stripe mark made by the Black Lives Matter Global Network Foundation. On the face of it the Adidas enforcement team seems to have decided that this was an application that they should challenge and an opposition was duly filed. However, they have clearly had second thoughts and have now decided to withdraw the opposition rather than run the risk of their actions being characterised as their opposition to the Black Lives Matter movement itself. Adidas have been having a tricky time from a reputation point of view recently with the fallout from the collapse of the Yeezy collaboration with Kanye West and clearly decided that this was a risk too far for them to take at this time. Unfortunately, the withdrawal of the opposition has attracted press coverage and it would obviously have been better if they had not filed the opposition at all. However, taking the decision to withdraw means they can limit the negative press. This matter is a reminder of how important it is to keep the wider context of your brand enforcement strategy in mind when making decisions to enforce your rights not just the strength of you legal arguments.
The German sportswear company had said in a filing on Monday that the Black Lives Matter Global Network Foundation design would create confusion with the famous branding Adidas had been using for more than 70 years.
However, on Wednesday Adidas made an abrupt U-turn, dropping its opposition to the BLMGNF trademark application.
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