When do 4 stripes infringe 3?

adidas has successfully sued Pacific Brands for infringing its “3 stripes” trade mark through the sale of three styles of shoes with 4 stripes; but failed in respect of six other styles. Three other styles settled before action, 2 without admissions.

adidas relied on 2 registered trade marks, TM No 131325 dating from 1957 and TM No 924921 dating from 2002. (If you have been on Mars for the last 50 years) you get the basic picture from TM No 924921:

TM 924921
TM 924921

registered for “footwear including sport shoes and casual shoes” in class 25. There is also an endorsement:

Trade Mark Description: The trademark consists of three stripes forming a contrast to the basic color of the shoes; the contours of the shoe serves to show how the trademark is attached and is no component of the trademark. * Provisions of subsection 41(5) applied.*

First, accepting that the stripes played a decorative role, Robertson J nonetheless found that Pacific Brands used all the stripe combinations on the shoe styles in issue as trade marks. In reaching this conclusion, his Honour was heavily influenced at [64] by the evidence [1] that sports shoe manufacturers typically placed their trade marks on the side of the shoe. Consistently with orthodoxy, it was nothing to the point that consumers might not know which manufacturer was actually behind the product or that other trade marks such as “Grosby” also appeared on the shoe.

The Airborne Shoe illustrates why Robertson J held some styles infringed:

Airborne shoe
Airborne shoe

The fact that there were 4 stripes rather than 3 tended against a finding or infringement. However, that was outweighed by the overall impression conveyed. At [235], his Honour explained:[2]

this shoe is deceptively similar to the applicants’ trade marks. I note in particular the parallel equidistant stripes of equal width (with blue edgings) in a different or contrasting colour to the footwear, running from the lacing area to the instep area of the shoes.

In contrast, the shoes found not to infringe were all found not to convey the sense of equidistant stripes against a contrasting background, let alone a sub-set of three “parallel” stripes.[3]

Perhaps, most strikingly, the Basement style at [282] conveyed the idea of two sets of two stripes rather than three or four equidistant stripes.

Basement shoe
Basement shoe

Next, the Boston shoe:

Boston shoe
Boston shoe

did not convey the idea of a group of stripes against a contrasting background:

there are four stripes rather than three and an obvious slightly wider gap between the second and third stripes. That is the first point. I do not conclude that there are two groups of two stripes. In addition, the inclusion of panels in the shoe of a similar colour to the stripes (black or close to black), and the stitched-in element of contrasting colour (white) extending behind the stripes, mean that as a matter of impression there is no deceptive similarity with the applicants’ trade marks. There is no sufficiently clear impression of the stripes forming a contrast to the basic colour of the shoes or being a colour different from that of the article of footwear to which the stripes were applied.

The idea of four stripes with the central pair “bridged” extended through into the Apple Pie Pink style at [296]:

Apple Pie shoe
Apple Pie shoe

Robertson J also found that the Stingray Black style did not infringe:

Stingray Black shoe
Stingray Black shoe

At [305], his Honour explained:

there are four “stripes”; the stripes taper to a narrower end towards the sole of the shoe and are therefore not of equal width; the gaps between the stripes are not equal and taper towards the top of the shoe at the lacing; and the four stripes have a curved element and are therefore not parallel. The features of the applicants’ trade marks relied on by the applicants in relation to this shoe are not those which give rise to the dominant visual impression of the trade marks as three parallel equidistant stripes of equal width. This shoe does not create the visual impression of three parallel equidistant stripes of equal width.

A couple of other points

First, Robertson J did not buy adidas’ invitation to infer an intention to infringe, or at the very least “to sail too close to the wind”[4] from an alleged pattern of copying. Pacific Brands withdrew two shoe styles said to be the foundation of this pattern without any admission of liability. A third style, the Stringray boot was withdrawn with an admission, but his Honour regarded that matter as resolved.

Secondly, adidas made an interesting attempt to bolster its case on infringement by the use of a survey. The survey purported to show that some 14%, 34% and 19% of those shown three different styles “similar” to Pacific Brands’ styles identified adidas as the source of the product because of the presence of stripes.

The survey was conducted online. Each participant was shown one of four images of a leg with a shoe style on its foot. (Three were intended to be versions of Pacific Brand styles; one, the control, was unmarked.) The participants were then asked a series of questions including:

B1. Who do you think makes this shoe?

B2. Why do you say that? Please be specific and explain the reasons for your answer in question B1.

Robertson J, however, accorded the survey little weight in making his assessment. There were a variety of reasons for this. These included, first, at [196] that the showing of the images online did not sufficiently replicate or correspond to the experience of the consumer in the market place (apparently this is known as “ecological validity”). Secondly, at [205] question B1 was impermissibly leading. Thirdly, at [210]-[211] the “control leg” was inadequate for the purpose because the absence of decoration signalled to some consumers that it was not sourced from a major brand.

adidas AG v Pacific Brands Footwear Pty Ltd (No 3) [2013] FCA 905 (version with images here)


  1. Referred to at [54].  ?
  2. Likewise, the Stingray shoe at [293] and the Apple Pie at [296].  ?
  3. At [217], his Honour found these features constituted the dominant impression conveyed by the registered trade marks.  ?
  4. Invoking the well-known formulation from Australian Woollen Mills at 658.  ?

Coke v Pepsi

The war between Coke and Pepsi over the shape of a bottle is alive and well.

Last week the parties were in court fighting over discovery.

By the tie of the hearing what was actually in dispute was quite narrow. In the end, Dodds-Streeton J ruled that Coca Cola should be allowed to get discovery amongst other things from Schweppes, Pepsi’s bottler in Australia, relating to whether or not Schweppes had sought any indemnities from Pepsi, either before or after the proceedings commenced. Schweppes et al. conceded discovery relating to any request before proceedings commenced.

It was argued that such discovery was potentially relevant to the respondents’ state of mind on the basis of the Australian Woollen Mills‘ principle that a defendant who tries to pass off is giving a sort of expert evidence that deception or confusion can be expected.

Given the concession that discovery directed to requests before proceedings commenced and there was no suggestion that the further discovery was oppressive, Dodds-Streeton J considered that discovery of any requests made after proceedings were commenced was appropriate as:

in passing off and s 52 actions, the applicant’s reputation is to be assessed at the date of the conduct complained of. As Gummow J explained in Thai World Import & Export Co Ltd & Anor v Shuey Shing Pty Ltd & Ors (1989) 17 IPR 289 at 302, that principle reflects that the reputation is not to be taken to be eroded by infringing activities which occurred before proceedings are instituted.

Other cases appeared to consider that the relevant time in (what used to be called) s 52 actions was still unresolved, but in passing off the relevant time was when the respondent commenced its conduct. (See e.g. Playcorp v bodum [54] to [62]).

Dodds-Streeton J’s reason provide a fair bit more detail about the nature of Coca-Cola’s claims; not so much about Pepsi’s defence, although apparently it had been using its “new” bottle shape since 2007 (that of course would still be well within the 6 year limitation periods).

The orders may also provide you with a useful starting point for discovery requests:

Coca-Cola Company v Pepsico Inc [2011] FCA 1069