Friday, 14 January 2011

Article 135 saves adidas stripes in Colombia

Last November Colombia's Trade Mark Office allowed the registration of two figurative marks consisting of three stripes embedded in clothing, reversing its position in 2001 that the marks were devoid of distinctive character.  This decision demonstrates the effect of Article 135 of Andean Community Decision 486 on a Common Industrial Property Regime, which permits registration "where its continued use in a member country by the applicant or assignor has endowed it with a distinctiveness in respect of the products or services to which it is applied.”  adidas, having initially failed to obtain registration, was subsequently able to prove that its stripes were distinctive in the light of the company's strong presence in the Colombian market, where it had invested heavily in advertising campaigns and sponsorships -- and more importantly that this had enabled the relevant public to identify the marks with their commercial origin.

Evidence submitted by adidas included a market research survey of random urban respondents which showed that 75.8% of those questioned did indeed associate the marks with adidas.  When asked why, 99.6% of the respondents answered "due to the stripes and/or due to the three stripes". Further evidence concerning the nature and extent of the use of the stripes, was sufficiently persuasive for the Trade Mark Office to change its mind.

Source: "adidas victory as Trademark Office makes U-turn", written for World Trademark Review by Laura Michelsen and Andrés Medina (Triana Uribe & Michelsen, Colombia).

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