UK High Court favors Thom Browne in trademark battle over stripes against Adidas

UK High Court favors Thom Browne in trademark battle over stripes against Adidas

The UK High Court has ruled in favor of luxury fashion brand Thom Browne in its trademark battle with Adidas in the latest round.

The bench of Justice Joanna Smith DBE observed that of the 16 Adidas trademarks Thom Browne sought to invalidate, eight were invalid and failed in statutory requirements for clarity and precision. Dismissing Adidas’s counterclaim for infringement, the court added, “Various registered trademarks, even if valid, must be partially revoked,” to reflect the judgment’s revised specifications.

The disputed marks comprised Adidas’s three stripes running vertically along the length of clothing and shoes and Thom Browne’s four-bar design composed of four equally-spaced horizontal stripes used asymmetrically in differing positions on the garments.

The judge noted, “The average, reasonably observant, consumer paying a moderate degree of attention will generally perceive the difference between three stripes and four.”

She continued that if given six seconds (as Adidas suggested), “I have no doubt that a person would have no difficulty perceiving that difference. Thus, I reject the submission from Adidas that the average consumer will not be able to tell the difference between three and four stripes.”

Commenting on the matter, Jeremy Hertzog, a partner at Mishcon de Reya and lead partner in the case, said the ruling, “had important implications for the scope of trademark registrations, particularly the emerging doctrine known as ‘position marks’ and appreciation of the distinct niches occupied by brands in the fashion sector.”

Earlier, Adidas opposed several of Thom Browne’s trademarks in the US and Germany. Though unsuccessful, it gave impetus to the designer to commence proceedings seeking cancellation and revocation of the Adidas marks in the UK. Thom Browne stated, “The judgment in the UK case with Adidas is significant, because I see this as a triumph for designers the world over.” He added, “I am proud to create a precedent that protects their ability to develop signatures and tell creative stories that are true to their vision.”

Meanwhile, the designer has also proceeded against Adidas in the Netherlands and at the EU Intellectual Property Office (EUIPO). Early this year, Adidas’s attempts to block EU registration of Thom Browne’s signature multi-striped grosgrain ribbon in the oppositiondivision of the EUIPO had failed.

However, the present judgment noted that the EUIPO’s cancellation division rejected the designer’s application to declare the invalidity of some marks directly equivalent to the marks in the case. It agreed with Adidas’s submission that the marks met the identification requirements. The decisions are under appeal.  Rodrigo Bazan, the CEO of Thom Browne, said that though it was “tough to defend in various jurisdictions, we are pleased with the latest judgment in the High Court of London. This reinforces the previous judgments in the US Federal Court, Germany and Europe. We are very pleased with our global legal teams that defended our case in all jurisdictions.” Founded in 2000 in New York, Thom Browne terms itself “an unashamedly expensive and exclusive brand” known for its tailoring, particularly the grey shrunken suits. In 2007, following a complaint from Adidas, it shifted from a horizontal three-bar motif to a four-bar motif.

Adidas has, meanwhile, claimed not acting against Thom Browne earlier because of its low sales figures in the UK. However, the ‘tipping point’ came in 2020 when the designer launched its Compression Range in the UK. It included tops, shorts and leggings made from an elastane fabric blend, which can be used for running, Mischcon de Reya said the judgment was welcomed by designers as confirmation that Adidas did not have monopoly on stripes.  The law firm’s statement read, “It also serves as a reminder that even apparently well-established trademarks have limits: if improperly registered or not put to genuine use, any trademark may be vulnerable to invalidation or revocation.”

It added that the high court ruling was seen as a ground-breaking guidance on a range of issues in trademark law, particularly the protection afforded by position trademarks in the UK, the effect of a crowded market on the distinctiveness of a trademark, and the relevance of alleged confusion in the post-sale context.

Thom Browne was represented by One Essex Court’s Philip Roberts KC and 11 South Square’s Edward Cronan. They were supported by a team from Mishcon de Reya, who along with Jeremy Hertzog included associates Eleanor Wilson and Zoe Albon. Adidas was represented by 8 New Square’s Charlotte May KC and Maxwell Keay (instructed by Hogan Lovells International).