Invalidity

The key issue on validity was whether adidas’s trade marks were registered in a way that made them sufficiently identifiable. Given no authority was found regarding position marks, Justice Joanna Smith relied on Nestlé v Cadbury, a case involving colour marks. This ruling established that vague terms such as “predominantly” in trade mark descriptions allow for multiple interpretations, implying various signs that are neither represented nor described, resulting in registrations lacking clarity and precision. Consequently, Justice Smith concluded that graphical and verbal descriptions of position marks must together enable the mark to correspond to one single, objectively ascertainable sign.

The portfolio of marks that Thom Browne sought to invalidate covered garments and accessories including tracksuits, jackets, shoes and bags (see image below). Among these was a mark registered for tracksuit tops, shorts, trousers, T-shirts and anoraks, with a description describing the stripes extending “substantially” along the entire outer surface of the sleeves, legs, or trunks. However, the attached illustration depicted a long-sleeved tracksuit top, leaving ambiguity regarding its application to the other garments. Additionally, the term “substantially” left room for interpretation: did it mean 90% of the length or just 51%? This lack of clarity in the description and graphical elements rendered the mark incapable of registration.

Two more marks were registered for upper garments like polo shirts and tracksuit tops, their descriptions specifying that the three stripes extended along “one-third or more” of the sleeve. Yet the attached illustration only showed a tracksuit top with full-length stripes. Without a precise definition of “one-third or more” (considering variations in length, starting point, and finishing point) the marks lacked clarity and were deemed unregistrable. A similar vagueness or inconsistency in the descriptions and illustrations of two tracksuit bottom marks and the bag mark also prevented them from forming a single, objective, registrable sign.

However, certain registrations (including those on shoes, caps and one tracksuit bottom mark) were unobjectionable. The latter described three stripes running down the leg with two horizontal stripes going around the back of the knee, and was also registered only for trousers and tracksuit bottoms. Consequently, given these elements were all represented in the illustration, there was no scope for different interpretations, so the registration requirements were met. This was also the case with the shoe and cap marks.

Infringement

Adidas’s infringement claim largely failed because Justice Smith determined that the average consumer would be able to distinguish between three and four stripes, as well as differences in width and spacing. Since Thom Browne’s design generally featured four stripes with greater spacing and a thicker appearance, there was no likelihood of confusion or association with adidas’s marks. Consequently, Thom Browne’s designs did not violate Sections 10(2) or 10(3) of the Trade Marks Act 1994.

Adidas argued that consumer attention is lower in a post-sale context, where garments are often seen in motion, causing a “bunching” effect that obscures differences between the stripe designs. However, Justice Smith rejected this argument, emphasising that the hypothetical average consumer must be considered in the context of making a purchase, where they have a clear view of the sign. Thus, the level of attention is not diminished post-sale.

Adidas also failed in its passing off claim, given there was no substantial evidence of consumer confusion, let alone deception.

Zooming out

This case marks the first substantive ruling on the registrability and infringement of position marks in the UK. Although adidas failed on all its infringement and passing off claims, even in relation to those registrations deemed to be valid, the case should not be interpreted to mean that position marks do not have value. Indeed, the judgment confirms that a mark characterised by the goods on which it is positioned might be deemed similar to a sign which is not located on any particular goods, or is located on different goods (although the position element of the mark is clearly a very important factor in that analysis). Care needs to be taken, as ever, when filing position marks, to ensure that verbal descriptions and graphic depictions are consistent and provide a clear and precise indication of the scope of protection claimed.

This case also confirms the increasing difficulty of proving a likelihood of confusion in a world where consumer commentary on social media should make any such confusion easily identifiable; and also the challenge of finding an actionable “link” for the purposes of reputation-based infringement. The court’s assessment of post-sale confusion is likely to be informed further by the Supreme Court, which is due to hear the appeal in Iconix Luxembourg Holdings v Dream Pairs Europe in March 2025.

Case details at a glance

Jurisdiction: England & Wales
Decision level: High Court
Parties: Thom Browne Inc v Adidas AG
Date: 22 November 2024
Citation: [2024] EWHC 2990 (Ch)
Decision (PDF): dycip.com/2024-ewhc-2990-ch

Related article

It is all in the angles: Umbro wins its double diamond logo trade mark infringement appeal, (Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc & Ors, Court of Appeal, [2023] EWHC 706 (Ch)) 20 March 2024:
dycip.com/ umbro-diamond-logo-appeal