For more than one hundred years, generations of FC Barcelona fans have witnessed amazing players wearing the famous Blaugrana shirt with garnet and blue vertical stripes. Adidas’s three-stripe mark is also particularly well-known among professional soccer players, fans, and consumers of soccer apparel. Over the years, the German company made headlines for filing lawsuits in connection with its famous trademark; and this time, it’s against Futbol Club Barcelona!
What’s the case all about?
It’s not a secret, with football kit partnerships large sums of money are involved. On October 30, 2016, FC Barcelona ratified the record-breaking 10-year Nike kit deal, which is worth up to 155 million € annually from 2018. And guess what, the day after Adidas filed its opposition with the U.S. Patent and Trademark Office (“USPTO”).
Coincidences of life or difference of opinion? Let’s take a closer look…
Adidas has been for years (and still is) one of the world’s leading manufacturers of athletic footwear, sportswear, and sporting equipment. According to the opposition document, over sixty years ago, German sportswear first placed three parallel stripes on its athletic shoes. Now, Adidas owns numerous federal trademark registrations for its (well-known) three-stripe mark.
In terms of U.S procedure, how does it work? Well, any entity that thinks it will be harmed by registration of a mark has thirty days from the day the mark is published in the Trademark Official Gazette in which to file an opposition. However, extensions of time may be granted, such as Adidas received.
What are the trademarks at issue?
FC Barcelona, founded in 1899, applied for a trademark (design only) described as follows: “The color(s) blue and garnet is/are claimed as a feature of the mark. The mark consists of a square containing seven vertical stripes. The 1st, 3rd, 5th and 7th stripes from the left are blue, and the remaining three stripes are garnet. The mark consists of a square containing seven vertical stripes. The 1st, 3rd, 5th and 7th stripes from the left are blue, and the remaining three stripes are garnet”.
In other words, it’s the classic and famous Blaugrana stripe motif for Barça shirt as Barcelona fans all over the world know it. It’s also the colors of the Blaugrana flags that are waved by the fans on match day at Camp Nou.
Adidas, created in 1924 (after Barcelona), began using the three-stripe mark on footwear at least as early as 1952, and as early as 1967 on apparel sold in the US and worldwide. According to the opposition document, the trademark is particularly well known among professional soccer players, fans and consumers of soccer apparel (for example, Adidas sponsors internationally famous soccer players, including Lionel Messi, Paul Pogba, and Gareth Bale) but also in connection with its frequent sponsorship of musical artists, pop stars (including Katy Perry, Selena Gomez, Pharrell Williams, and Kanye West).
What are the claims?
The German sportswear giant Adidas alleges that FC Barcelona’s pending application for registration should be denied for the following reasons:
- Consumers familiar with Adidas are likely to assume that the footwear and apparel offered with the FC Barcelona trademark originate from the same source, or that they are affiliated, connected, or associated with Adidas.
- Really? We are talking about shoes and sport wear with three stripes (mostly on the side of a sweater, jersey, or shoes) comparing to famous Blaugrana 7 stripes…
- Barcelona’s trademark incorporates parallel stripes in a manner confusingly similar to Adidas’s mark in appearance and overall commercial impression.
- Again, this argument is a bit odd. One could ask why is the trademark only confusingly similar today and why Barcelona has been waiting so long for registering the trademark?
- The Class 25 and Class 28 goods identified in the application are identical and/or closely related to the goods and services Adidas long has offered in connection with the Three-Stripe Mark.
That’s a typical argument as, in trademark law, protection is only granted in relation to specific goods or services. Therefore, if your competitor is using the same Class and the same goods, then you might have a case.
- Adidas also argues that Barcelona trademark is likely to cause confusion, deception, or mistake as to the affiliation, connection, or association with Adidas, with consequent injury to the German company’s reputation and the public.
It seems hard to argue that FB Barcelona fans have been confused with the kit from Nike that features wide, alternating blue-and-red stripes in deeper tones of the two colors, and suddenly believing that, in fact, it was made by Adidas because of the stripes.
The question remains: Does anybody seriously believe that the relevant consumer will be confused between these two trademarks? It could mean that any company making any striped apparel now infringes Adidas's trademark irrespective of the number of stripes used. An extensive monopoly of Adidas’s trademarks would definitely be incompatible with a system of undistorted competition, because it could have the effect of creating an unjustified competitive advantage for a single trader.
Last year, the shape of the shield/emblem (club badge) of the FC Barcelona football club, has been refused for registration (GC, 10 December 2015, Case T-615/14, Fútbol Club Barcelona / OHIM) because it lacks any “striking feature”. Whether the European soccer champions will also lose the famous Blaugrana trademark, that’s another question. Stay tuned!
