Adidas AG v. Globe International Nominees Pty Ltd., 2015 FC 443 (Manson, J.)
April 10, 2015
Robert MacDonald and Jennifer Galeano for the Applicant
Kenneth McKay and Leigh Walters for the Respondent
Adidas appealed a decision by the Registrar of Trademarks that determined the Adidas three-stripe-design mark was not confusing with the Respondent’s stripe design mark. Both marks consisted of stripes and both were sold on the same wares. Here, the Court upheld the Registrar’s decision. In its confusion analysis, the Court agreed that the Adidas mark was famous but the consumer familiarity with the mark ultimately worked against the Applicant. In the current instance there were small differences between the marks. The Court noted that when a mark is famous, upon first impression, the consumer will notice small differences in a competing mark. This recognition can serve to further differentiate two marks, even when these are used in association with the same wares or services. Therefore, although the Court agreed that the marks were used in association with the same wares and there was similarity between the marks, it still found that consumer confusion was unlikely because the Adidas mark was famous.
By: Tracey Doyle, Borden Ladner Gervais LLP