Thom Browne adidas v4

The importance of careful consideration when registering a trademark

Lessons learned from Thom Browne Inc and Thom Browne UK Limited (Thom Browne) v adidas AG and adidas International Marketing B.V. (adidas) [2024] EWHC 2990 (Ch).  This case, before the English High Court, is brought by adidas for claims of trade mark infringement and passing off against Thom Browne relating to its use of stripes on clothing.  It illustrates the consequences of overly broad trade mark registrations

Background

adidas owns a substantial portfolio of trade marks for its “three stripes” design, which is used on sportswear and footwear. Thom Browne used a horizontal ‘Three-Bar’ motif on its clothing and footwear designs in around 2005. In response to a request made by adidas in 2007 to discontinue using this ‘Three-Bar’ motif, Thom Browne adopted a ‘Four-Bar Design’.  Adidas brought proceedings against Thom Browne for trade mark infringement based on the Four-Bar Design.

While this report focuses on the English High Court proceedings, adidas has also unsuccessfully brought similar claims in Germany and the United States regarding Thom Browne’s use of stripe designs on its garments.

adidas claimed that Thom Browne’s design infringed its marks and constituted passing off. Thom Browne countered that adidas’ registrations were imprecise, overly broad and invalid, seeking their cancellation/revocation.

Core legal issues

The dispute before the High Court focused on four main points:

• Were adidas’ trade marks sufficiently clear and precise to be valid?
• Were these trade marks genuinely used by adidas?
• Did the designs used by Thom Brown infringe adidas’ trade marks?
• Did the designs used by Thom Brown constitute passing off?

The Court’s Findings

• Validity and Precision
  Under s.3(1)(b) of the Trade Marks Act 1994, a trade mark shall not be registered if it is “devoid of any distinctive character.” Case law further establishes that a mark must be presented with sufficient clarity and precision so that the extent of protection can be determined by the registrar, the courts, and third parties¹.
  The need for clarity and precision is well established in case law. The Court of Justice in Sieckmann (C-273/00) confirmed that a sign must be “represented in a manner that is clear, precise, self-contained, easily accessible, intelligible, durable, and objective"². This principle was reinforced in Libertel³ and Heidelberger Bauchemie⁴, which warned against representations leaving room for multiple possible forms or interpretations.
  

These principles are reflected in s.1(1) TMA 1994, which reads:

1. A trade mark may consist of any sign which is capable:
   • of distinguishing the goods or services of one undertaking from those of other undertakings, and
   • of being represented in the register in a manner which enables the registrar, other competent authorities, and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.
     Accordingly, s.3(1)(a) prevents the registration of any sign that does not satisfy these requirements. The Court treated the requirements as set out at sections 3(1)(a) and 3(1)(b) as central to assessing adidas’ registrations.
     The Court found that 8 of adidas’ 16 trade marks were invalid due to their descriptions being ambiguous and overreaching. The specifications set out that the marks would cover “substantially the whole length” and that they would be “generally used vertically”, which the court found confusing, as this would mean that they could cover multiple possible stripe arrangements, including different positioning of, and widths between, the stripes.
     Justice Joanna Smith noted that: “A trade mark must be sufficiently clear, intelligible, precise, specific and accessible to be capable of registration.”⁵
     She goes on to explain that a vague description can “open the door to a multitude of different visual forms”⁶, making it impossible for competitors to determine the scope of the protection.
     In short, the Court held that the registrations lacked the required clarity and precision because the wording used by adidas was too vague, left excessive room for interpretation, and did not allow a third party to understand what exact sign was protected.
     The Court also partially revoked some of adidas’ trade marks for non-use, illustrating that trade mark owners must: (i) use their mark and (ii) that broad specifications must match their actual commercial use.
2. Trade mark infringement (s. 10(2) and 10(3) TMA 1994)
   adidas argued that Thom Browne’s four stripe design created a likelihood of confusion and took unfair advantage of adidas’ reputation in its trade marks. The Court rejected these claims, highlighting major visual and contextual differences:
   
   • adidas uses three vertical stripes; Thom Brown uses four horizontal stripes;
     
   • adidas is a mass-market, entry price sportswear brand; Thom Browne is high-end fashion sold at luxury retailers, or its own stores at high prices.
   • adidas failed to provide evidence of actual consumer confusion from consumers in the based in the UK.
     Justice Smith noted that for position marks, i.e. marks intended to be used in a particular position on a product, their placement and orientation are decisive: “Because the position of the mark is an integral part of the mark itself, the similarity assessment must include consideration of the sign’s orientation and position on the goods in question”.⁷
     With regards to the average consumer, she noted that: “The average reasonably observant consumer paying a moderate degree of attention will generally perceive the difference between three stripes and four stripes.”⁸
     She further clarified that post-sale observers (such as bystanders) do not count as the average consumer: “A mere by-stander seeing the garments as someone jogs by them could not qualify as the average consumer.”⁹
     With only low to moderate similarity found and no credible confusion evidence, the Court dismissed both infringement claims.
3. Reputation and Unfair Advantage (s. 10(3) TMA 1994)
   Although adidas’s three stripes enjoyed a strong reputation, the Judge found no link in the mind of the average consumer between the two brands, finding it “wholly implausible¹⁰” an average consumer would confuse adidas’ mass market brand with Thom Browne’s high-end positioning. The Judge also rejected the notion that Thom Browne was seeking to benefit from adidas’ reputation in its trade marks¹¹.
   ‍
4. Passing Off
   adidas alleged that Thom Browne’s use of four stripes amounted to misrepresentation and damage to its goodwill. Justice Smith rejected this, finding no evidence of consumer deception: “This is not a case in which Thom Browne has sought to ‘knock off’ adidas garments.”¹² She concluded: “A substantial proportion of the public would not be deceived by Thom Browne’s use of four stripes into believing that [its clothes] came from adidas or were connected with it.”¹³ While adidas had goodwill in its vertical stripe design, it failed to show sufficient goodwill in its horizontal stripes, or any misrepresentation that could lead to damage.
   ‍‍
5. The crowded market
   The Judge acknowledged that decorative stripes are common in the clothing industry. Although adidas’s vertical three stripes remained distinctive, this crowded field reduced the scope of exclusivity the company could claim.
   ‍
6. Considerations and summary of key points
   Justice Smith offers some clear principles for brand owners to follow:

1. Precision is fundamental: “adidas chose the words it used for this Mark and could have chosen to employ a great deal more precision, alternatively to apply to register different Marks encompassing illustrations of how each Mark was to appear on particular garments. It did neither of these things.”¹⁴
2. Position marks demand accuracy: The orientation and placement of design elements form part of the mark itself.
3. Visual similarity alone is insufficient: Consumers can and do distinguish between three and four stripes.
4. Evidence of confusion matters: the absence of real world confusion undermines infringement claims. (adidas relied on a few Instagram comments, and was unable to interview any witnesses and lost credibility because of this.)
5. Market context is important in defining perception: High-end vs mass-market goods occupy different market spaces and therefore target different consumers.
6. If your logo/design is common this weakens it: Decorative elements like stripes carry less weight in operating as a badge of origin.

Lessons learned

• Draft with precision: Make sure your description is clear and avoid ambiguous wording as this risks invalidating the mark and weaking its enforceability.
• Apply a “use it or lose it” policy: adidas registered their marks for products that never went to market. Ensure that claims reflect ongoing use for the goods listed.
• Position marks require detail: adidas’ registered trade marks were not clear about the location, size and proportions of their mark. Avoid words like “substantially” and “generally”.
• Provide clear evidence: There was lack of factual proof of confusion by consumers in this case. adidas primarily relied on its brand reputation and theoretical risk.
• The implications of overreach: adidas felt that they had a monopoly over stripes in fashion garment. The Court saw this as overreach trying to monopolise a common sign which damaged its credibility.

Conclusion

The decision by the High Court in this case highlights that imprecision at registration can be detrimental. It reinforces the notion that trade marks must be clearly defined, genuinely used and enforced.

¹ Sky v SkyKick [2020] UKSC 17

‍² Para 33, Ralf Sieckmann v Deutsches Patent- und Markenamt [2002] ECR I-11737^‍

³ Libertel Groep BV v Benelux-Merkenbureau C-104/01, EU:C:2003:244

⁴ Heidelberger Bauchemie GmbH, Case C-49/02, ECR (2004)

⁵ para 128 Thom Browne Inc & Anor v adidas AG & Ors [2024] EWHC 2990 (Ch) (22 November 2024)

⁶ para 180 Thom Browne Inc & Anor v adidas AG & Ors [2024] EWHC 2990 (Ch) (22 November 2024)

⁷ para 392 ibid.

⁸ para 408 ibid.

⁹ para 407 ibid.

¹⁰ para 648 ibid.

¹¹ para 676 ibid.

¹² para 758 ibid.

¹³ para 761 ibid.

¹⁴ para 173 ibid