If you are a sneaker fanatic, you will likely be familiar with the term SUPERSTAR – a name used to refer to adidas’ low-top sneaker shoe which was launched in 1969 and which has been referred to in pop culture for decades.
This name was the subject of an opposition by adidas AG against an application of Fiona Sinclair and White Line Clothing Pty Ltd (the Applicants) for SUPERSTAR, [http://www8.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/ATMO//2017/125.html], a case illustrating that popular culture can be an important evidentiary resource.
SUPERSTAR – THE TRADE MARK
adidas has used the SUPERSTAR name for the range of shoes for decades, but failed to register a trade mark for SUPERSTAR in Australia.
In late 2015, the Applicants filed an application for the exact mark SUPERSTAR covering in Class 25, amongst other goods, apparel (clothing, footwear, headgear). The Applicants indicated that they used the mark as a secondary brand for a range of children’s wear and babywear.
Not surprisingly, adidas opposed the SUPERSTAR application. It asserted that it had cemented its reputation in SUPERSTAR through continuous advertising, promotion, publicity and sales of SUPERSTAR branded footwear and clothing.
In the absence of its own prior application or registration at the time, adidas was forced to rely on evidence of its use of, and reputation in, SUPERSTAR.
adidas was successful under the ‘reputation’ ground of opposition. This required adidas to show that its SUPERSTAR trade mark had, before the priority date of the opposed application, acquired a reputation in Australia and, because of that reputation, the use of the Applicants’ opposed mark would be likely to deceive or cause confusion.
adidas’ evidence showed that it had acquired a reputation in SUPERSTAR through extensive and long use globally since 1969, and in Australia in relation to footwear since at least 1981 and clothing since at least 2010.
Its evidence of reputation and fame was substantial, including:
- significant revenue figures for the sale of footwear in Australia bearing SUPERSTAR (although it was noted that revenue for apparel was modest)
- evidence that shoes and apparel bearing the adidas SUPERSTAR mark were available for sale in national retailers Australia wide (for adults and children)
- a declaration that from the 1980s, adidas’ SUPERSTAR shoe became iconic in popular culture, and adidas was able to provide examples of this.
The evidence included an extract from a book Trainers by Neil Heard, which states:
Say the term ‘old skool’ to anyone and probably the first sneakers that spring to mind are the Adidas Superstar, which, arguably could be termed the classic of all classics. How else do you explain the fact that a training shoe [sic] first introduced in 1969 was still the biggest-selling shoe [sic] globally in 2001.
adidas also exhibited a Wikipedia page from 17 January 2012 which lists references to adidas’ SUPERSTAR shoe in popular culture from 1986 to 2008 (in movies, video clips, video games and television programs).
Notably, adidas’ evidence included an extract from the National Gallery of Victoria’s website showing an advertisement for an event titled Sneakers: Classics to Customs from December 2006 to July 2007. The event description referred to classic “sport shoes that have become enduring styles” and listed the adidas SUPERSTAR shoe.
The Hearings Officer concluded that the ground of opposition had been made out, particularly as the opposed SUPERSTAR application was identical to adidas’ mark and covered footwear, and adidas had acquired a reputation in Australia for footwear under its own SUPERSTAR mark. Accordingly, a significant number of consumers would at the very least experience a reasonable doubt as to the existence of some sort of connection between the adidas SUPERSTAR mark and the opposed mark of the Applicants.
Interestingly, adidas never sought to secure registration for its SUPERSTAR trade mark despite it being an iconic name and its use and promotion for decades. The dispute with the Applicants prompted adidas to file an application.
If adidas had secured registration for SUPERSTAR earlier, it may have avoided the time and costs involved in this opposition.
When adidas realised that it had a classic brand in its hands, it should have added that brand to the adidas portfolio, rather than to rest on its common law laurels – which can in the long run be more expensive to assert.
A TIMELY REMINDER
This is a timely reminder for traders to undertake regular reviews of how they are operating in the marketplace and, if they have a “hit” brand in their hands, to seek to secure a registration. It also emphasises the potential value of popular culture as an evidentiary resource in trade mark proceedings.
At the time of this article, adidas owns a pending application for SUPERSTAR covering clothing, footwear and headgear.