in Thom Browne Inc and another v adidas International Marketing BV and others [2024] EWHC 2990 (Ch), the High Court found that certain figurative marks comprising three stripes applied to various items of clothing and a bag, and registered for those goods, were invalid for not complying with the identification requirements of the Trade Marks Act 1994. Even if the marks were valid, they were not infringed by the claimants’ goods displaying a pattern comprised of four stripes.

You know adidas (always spelled with a lower case, by the way, according to their brand guidelines). Their key marks are:

Mr Thom Browne started his eponymous global fashion business in around the year 2000 in New York. It sells high-end, luxury clothing which is focused on tailoring. At the centre of the product range is the TB grey tailored suit (which can include shorts or trousers), whose defining characteristics are slim proportions and what has been described as a “shrunken” look, i.e. trousers cut to above the ankle. The court described it as “unashamedly expensive and exclusive”. 

Here’s Thom Browne’s look:

As TB grew, around 2017, it filed for several trademarks at the EU IP. Adidas opposed the registrations based on prior filed marks. TBenced these proceedings, seeking to invalidate Adidas’s marks. Meanwhile, Adidas filed a counterclaim alleging trade ultimately commmark infringement and/or passing off. Adidas (sorry, autocorrect capitalisation) said they never took action against Thom Brown until they launched this new ‘compression range’ of sportswear made from an elastane fabric blend. They said the similarities are obvious and that the use of the Four Bar Design takes unfair advantage or, or is detrimental to, the distinctive characteristics and reputation of the adidas marks.

The Court decided:

• some of the adidas marks were invalid
• some of the adidas marks should be revoked to relfect a revised specification
• even if the marks were valid, there was no infringement
• the passing off claim failed.

Invalidity

For a trade mark to be valid, it must comply with section 1(1) of the Trade Mark Act 1994. Namely, it must identify clearly and precise information to the public denoting origin.  With adidas, some of the marks were ‘position marks’ which are rare. For instance, the mark illustration on a tracksuit was of a long-sleeved top. There was no clarity on the position of the mark on trousers or short-sleeved garments. The registration of the other tracksuit top marks described the stripes being applied to an upper garment and running along one-third or more of the length of the sleeve.

The Court rules that some of the marks were invalid.

The key note here for businesses is how important it is to get trade mark registrations correct.

Infringement 

Adidas was wrong to say that the level of attention of the average consumer in the post-sale context was lower than it would be at the point of sale. Further, they were wrong to suggest that a realistic and representative scenario for assessing the post-sale impact of TB’s products involved the wearer “moving past at speed” so that the consumer’s view was “fleeting”, or the stripes might become “bunched” in motion.

The Court said that a more realistic perspective in relation to TB’s four-bar design on their goods must belong to the average consumer who was able to perceive the design in an environment in which they were likely to rely on it, that is in contemplating making a purchase.

However, while the average consumer must be able to see the allegedly infringing sign in a representative environment, that did not necessarily involve being able to appreciate any allegedly superior qualities of the allegedly infringing products by being able physically to touch, or at least to inspect, them at close range.

On the facts, the average consumer would generally perceive the difference between three stripes and four. They would also be able to perceive differences between the appearances of stripes, their width and the distance between them. Many of TB’s signs produced a much thicker, “chunkier” pattern than was produced by the vertical stripes used in the marks, which the average consumer would view as different; all the more so when the pattern presented in a horizontal orientation and the stripes appeared “hooped”.

Case: Thom Brown Inc v Adidas [2024] EWHC 2990 (Ch)

If you are facing a claim for passing off or trade mark infringement, are seeking to register a trade mark or oppose a trade mark, or anything else relating to Intellectual Property then speak to Steven.