Do Four Stripes On Sports Shoes Violate Adidas’ Trade Mark? Opposing opinions
Adv. Omer Wagner, Adv. Gill Nadel
In the middle of December a verdict was given by the District Court of Tel Aviv (2177-05 Adidas-Salomon versus Gelal Yassin, Judge Agmon-Gonen) according to which imported sports shoes with four diagonal stripes, do not violate the Adidas’ famous trade mark, three parallel stripes. Also, there is no risk of misleading the consumers, there is no reason to allow Adidas to expand the protection of its trade mark more than necessary.
And yet recently another verdict in a different lawsuit also involving Adidas using an importer of sports shoes which allegedly violated Adidas’ trade mark, gave out a completely different ruling even though both cases had very similar features.
The facts of the case and the claims of the parties:
Genetos company imported to Israel during August 2007 sports shoes baring the mark “orbit”. The shipment was detained by customs due to a suspicion it might violate the trade mark of Adidas. After the shipment was examined by Adidas, Adidas Company filed a lawsuit against the company which imported the detained shoes. The imported sports shoes had four colorful stripes and Adidas claimed it violated its famous trade mark which has three parallel stripes.
Regarding the “orbit” marking, Adidas claimed that it often names its sports shoe versions with names such as “Porch”, “Disney”, “Goodyear” etc, and therefore the name “Orbit” on the sports shoes does not remove the risk that they are misleading to the consumers.
Adidas claimed that even if Genetos company prints on these shoes that they are “imported from China by Genetos”, this will not remove the risk that the sports shoes are misleading because Adidas too imports sports shoes from china.
Genetos company did not defend itself properly in court and did not show up for court hearings, thus the court’s decision was based mainly on Adidas’ claims.
The verdict :
The court ruled that although the sports shoes that were caught (by customs) had four colorful stripes and Adidas had a trade mark of three stripes, this will not remove the risk that they are misleading, and thus there is a violation of an existing trade mark and an attempt to pass them off as something they are not .
One of the court’s remarks was that the consumers could not, in real time, compare between the two models, thus even if there is a certain difference, it does not remove the danger of misleading (the consumers) nor does it cancel the similarity between the sports shoes.
In light of this, and based on Adidas’ claims alone, the court ordered customs to destroy the violating merchandise and obliged Gentoos to pay Adidas compensation at a sum of 100,000 NIS in addition to court expenses and attorney’s fees of 25,000 NIS + VAT and the expenses of destroying the merchandise.
C.F. (Civil file) (Tel Aviv District )2326-07 Adidas-Solomon et al. Vs. Genetos Shoes Ltd. Et al., Judge Uri Shoham, Verdict gave on 10.1.11. Adidas represented by Adv. Eitan Shaulski and Inbal Nevot Eisental, Genetos company represented by Adv. Ibrahim Genetos. Customs represented by Tel Aviv civilian District Adv.).
Since Genetos company chose not to defend itself in court, this went against it and led to a verdict against it even though it was not clear whether or not the imported sports shoes did, in fact, violate Adidas’ trade mark
In a verdict given in December in similar circumstances (2177-05 -Adidas-Salomon Vs. Gelal Yassin) the court noted in that particular case that there is a danger of over protecting trade marks, in a way that even use of four stripes will be violating a trade mark of three stripes.
In that same case, it was noted that if a clear boundary between what is permitted and what is not will not be set, importers on a small scale, whose merchandise was caught by customs, will avoid entering court procedures against famous foreign manufactures, even when they feel they did not break the law.
The Genetos company’s case, which chose not to defend itself is an example of such a fear, which was raised in the previous case.