More than Three Stripes and you’re out: Adidas loses trade mark case against Thom Browne

In a significant ruling from the English High Court, sports brand Adidas has been comprehensively defeated by fashion brand Thom Browne in a trade mark dispute about the use of stripes on garments and other products.

The case examines a range of issues in trade mark and passing off law. It is particularly important in relation to “position trade marks” where the positioning of the mark on a product is an inherent feature of the trade mark registration. The case examines the validity of such trade marks, emphasising the precision with which they need to be described (at the filing stage) to survive an attack on validity. It then explores the extent to which such marks can be used in an enforcement context where the essential issue was whether the Adidas’ Three Stripes Marks were infringed by the Thom Browne’s Four Stripe Design.    

Background of Thom Browne v Adidas

The Claimants, Thom Browne Inc (based in the USA) and Thom Browne UK Limited (together TB) sought to invalidate a portfolio of trade marks belonging to the Adidas group of companies (Adidas). Adidas then counterclaimed for trade mark infringement and passing off.  

The relevant Adidas Trade Marks all relate to its “Three Stripes Marks”, registered for a range of clothing, footwear and related accessories. They are what are commonly referred to as “position trade marks”. A position trade mark consists of the specific manner in which the mark is featured or positioned on the product, determining also its size or proportion in relation to the product (examples can be seen later in this article). 

Adidas has stores in the UK and also sells its products online to consumers. Additionally, Adidas sells through retailers such as Sports Direct, JD Sports, ASOS and Next. Its products have more recently expanded from sportswear into leisurewear and fashion.

TB sells high-end, luxury clothing. TB’s marketing is largely restricted to its website, social media presence and fashion shows. One of the design elements used on approximately a third of TB’s products is the “Four Stripe Design” consisting of four equally spaced horizontal stripes of equal width which are used in differing positions on its garments. These include “hooped” designs around the upper arms and upper legs of garments. Global sales by TB of goods bearing the Four Stripe Design run into millions of US dollars. By 2018, TB’s business globally was valued at approximately US $500 million.   

The Four Stripe Design was developed by TB as a response to a request from Adidas in May 2007 that TB move away from its then horizontal Three Stripe Design, something that TB had started to use in 2005. TB’s Four Stripe Design then featured for the first time in the UK in its Spring/Summer 2009 collection. TB considered that the Four Stripe Design had become an important brand signifier for its business.  

The proceedings

The dispute is a global one. For example, in December 2020, Adidas filed an Opposition in the USA in relation to pending US trade mark applications by TB. In 2021 Adidas also sued TB for trade mark infringement, dilution, unfair competition and unfair business practices in the US District Court for the Southern District of New York. Those claims were unsuccessful. There have also been claims in Germany where, once again, Adidas was unsuccessful.   

In terms of the English High Court proceedings, TB sought cancellation and/or revocation of certain Adidas’ trade marks. Fundamental to TB’s proceedings were allegations that the Adidas trade marks claimed a wide variety of visually different permutations of the use of its Three Stripe Marks, reflecting an attempt by Adidas to establish a monopoly over the use of different colours, widths, lengths, positions and arrangements of Stripes. TB said Adidas was improperly asserting that decoration can be an indication of origin. TB also said the Adidas Marks should be declared invalid for being devoid of distinctive character and that they are liable to revocation in whole or in part for non-use.  

Adidas denied these claims and brought a Counterclaim against TB alleging infringement and/or passing off in relation to over one thousand items in the TB product range. Adidas explained why it had not previously taken action in the UK on the basis that the “tipping point” came in 2020 when TB launched its “Compression Range” consisting of tops, shorts and leggings aimed at the sportswear sector. TB accepted these products can be used for running. 

Adidas said that the similarities between its Three Stripes Marks and the Four Stripe Design used by TB was obvious. Adidas said that there was a real risk of post-sale confusion on the part of the average consumer and that the use of the Four Stripe Design by TB took unfair advantage of, or was detrimental to, the distinctive character or repute of the Adidas Marks. 

Cancellation and/or revocation of the Adidas’ Marks

The main questions for the court to consider on the challenges by TB to the Adidas Trade Marks were as follows:

(a) On Invalidity, were the Adidas Trade Marks registered in a way which enables them to be sufficiently identifiable or are they too uncertain in their description to function as trade marks?

All of the Adidas Marks were registered prior to 14 January 2019 and therefore fell within the unamended test for the basic requirements of a trade mark set out in Section 1(1) Trade Marks Act 1994 (TMA). This states that: a ““trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.”

TB said a number of the Adidas Marks did not satisfy this test because: (i) they could be represented in an impermissibly wide number of forms; and/or (ii) the descriptions of the Marks were inconsistent with the graphic representation which accompanied them; and/or (iii) there was a lack of clarity and precision in the descriptions of the Marks; and/or (iv) there was a lack of clarity as to colouring of the Marks; and/or (v) many of the Marks were objectionable because they contemplate “unrepresented signs”, in other words the pictorial representation is used as an example only, meaning that the Mark includes an impermissibly wide multitude of forms. Accordingly, TB said these Adidas Marks were invalid under Section 47(1) TMA as they should have been refused registration in the first place under Section 3(1) TMA.   

(b) On Revocation, had the Adidas Marks been put to genuine use during the five-year period ending on 29 July 2021? If not, TB said they should be revoked for non-use. 

The Judge, Justice Joanna Smith, reviewed relevant case law relating to issue (a) including Société Des Produits Nestlé S.A. v Cadbury UK Limited (“Nestlé”), where the colour trade mark was described as the “predominant” colour applied to the whole visible surface of the packaging of goods. In that case, the Court of Appeal refused to allow the registration because “the use of the word predominant opens the door to a multitude of different visual forms as a result of its implied reference to other colours and other visual material not displayed or described in the application and over which the claimed colour may predominate”. This was impermissible as competitors would not be able to ascertain the full scope and extent of the registration. Use of similar expansive terms in trade mark descriptions such as “every conceivable form” and “a significant proportion” and “approximately 50%-50%” had led the courts in other cases to conclude that this would lead to multiple signs which were incapable of satisfying the requirements of precision and clarity.  

The Judge put forward a number of general propositions based on Nestlé and the CJEU case law which underpinned it as follows: 

i. The graphical representation must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it is clear and can be identified precisely.

ii. The graphical representation includes both the visual representation and any verbal description and must be considered as a whole with neither taking precedence over the other.

iii. The verbal description of the sign must not be inconsistent with the graphical representation of it.

iv. The underlying rationale for the requirements for registration are that they are necessary for the proper working of the trade mark registration system, both from the point of view of the competent authority who must examine the mark for registration and from the point of view of competitors.

The Judge then considered each Adidas Mark in turn against these criteria. The Judge found eight out of sixteen Marks in question to be invalid. The strictness of the tests applied by the Judge is illustrated by the following three examples, two of which were invalidated: 

The Tracksuit Top Mark (ending 808)

The pictorial representation of this mark is below:

The mark was for “shorts and trousers being articles of sports clothing; T-shirts and track suits; anoraks and windcheaters; but not including footwear; all included in Class 25” and was described as follows:

“The mark consists of three equally spaced stripes, all of the same colour, applied to the exterior of the goods covered by the specification, the stripes running down substantially the whole length of the outer lateral surface of the sleeves, legs and/or trunks of the goods, the stripes contrasting with the colour of that part of the goods to which the stripes are applied, as illustrated on the form of application”.  

The Judge invalidated this trade mark holding that it was insufficiently clear, intelligible, precise, specific and accessible to be capable of registration. 

According to the Judge it involved a multiplicity of signs which extended beyond any permissible degree of variation. It was not possible to determine the precise subject of the protection that the Mark grants to Adidas. There were particular problems with the use of the phrase “substantially the whole length” as well as the graphic representation not including examples of garments with “legs” or “trunks” meaning that it was unknown what was meant by “substantially the whole length” in respect of these items of clothing. There were a number of potential variations in the positioning of the Three Stripes which were not illustrated and which therefore could not be identified with sufficient certainty. And “substantially the whole length” was also because it could mean 80% or 90% along the length of a sleeve or trouser leg, or it could simply be something a little over 50%. The Judge said that Adidas could have chosen a much more precise description in relation to this Mark or could have registered different Marks covering what was to appear on different types of garments, but it chose not to.  

The Shoe Mark (ending 646)

The graphic for this Mark is below:

The Mark is registered in respect of “Footwear, limited to footwear with laces on the footwear upper” and is described in the following terms:

“The mark consists of three parallel equally spaced stripes applied to footwear, the stripes positioned on the footwear upper in the area between the laces and the sole”.

The Judge did not invalidate this Mark.

She said the Mark is clearly described and the graphic serves to show exactly how the stripes are to be positioned on the footwear. It could not be said that the Mark refers to an impermissible number of signs. Additionally, there was no ambiguity in the words “in the area between the laces and the sole” when viewed in conjunction with the image. They cover the entirety of the gap between the laces and the sole. Additionally, the length of the stripes is obviously determined by the size of the area between the laces and the sole. 

The Bag Mark (ending 889)

The graphic for Bag was as follows:

The Mark was registered in class 18 (“leather bags, bags for sports, travel bags, backpacks, beach bags, suitcases, wallets, purses”) and class 28 (“bags adapted for carrying sporting articles”). It was described as follows:

“The mark consists of three parallel equally spaced stripes generally used vertically on a product covered by the specification. The example shown in the representation of the mark demonstrates the relative proportion of the mark in relation to the product. The bag as indicated by dotted lines is not part of the trade mark”.

The Judge invalidated this Mark.

The Judge explained there was ambiguity in the meaning of the words “generally used vertically”. For example, does this mean that the three stripes are mostly used vertically but could be used diagonally or horizontally? And the wording indicates that the image is used only as an example. So it could be that the three stripes might be positioned elsewhere on the bag. The combination of these issues created too much uncertainty for the Judge about the scope of the registration. The Mark therefore allowed for an impermissible multitude of forms and fell foul of the requirement for certainty, intelligibility, specificity, precision, accessibility, uniformity, self containment and objectivity. Third parties would be confused about the scope and nature of the Mark.   

The Judge then turned to issue (b) – revocation for non-use.

The Judge ordered partial revocation of some of the other trade marks for non-use. For example, use of the brands in relation to “sweaters” could not be equated with use on “sweatshirts”. Similarly, use of the brand on “Bags for Sport” could not be equated with use on ”Travel Bags”. These decisions emphasise the need to be very precise about the description of goods in relation to which a claim for protection is being made. It also echoes the recent ruling of the Supreme Court in SkyKick. 

Adidas’ Counterclaim on Infringement

In its counterclaim Adidas alleged infringement by TB of the Adidas Marks under sections 10(2) and 10(3) TMA and for Passing Off.  

The parties agreed that the court could address issues of trade mark infringement and Passing Off by reference to Specimen Items.

The issues between the parties on Adidas’ counterclaim, included:

(a) Did the use of the Four Stripe Design by TB constitute use of a sign which is similar to each relevant Adidas Mark in relation to goods which are identical or similar to those for which each adidas Mark was registered, and there exists a likelihood of confusion on the part of the public? (the Section 10(2) TMA claim).

(b) Did the use of the Four Stripe Design Sign by TB, without due cause, take unfair advantage of, or was it detrimental to, the distinctive character and/or the repute of each of the asserted Adidas Marks? (the Section 10(3) TMA claim).

(c) What is the nature and extent of the goodwill in the Three Stripe Mark and did the use of the Four Stripe Design by TB constitute a misrepresentation to the public that their goods are those of Adidas or TB are connected with Adidas? (the Passing Off claim).

Trade Mark Infringement under Section 10(2) TMA  

As a reminder, Section 10(2) TMA provides that for infringement, “ … (i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is at least similar to the trade mark; (v) it must be in relation to goods or services which are at least similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion on the part of the public”.

The parties had been unable to find any reported cases in the UK which expressly considered the question of infringement of a Position mark. This case is therefore very important as setting out the approach to take.

The Judge explained that for a Position mark, when assessing the similarity of the Mark and the defendant’s Sign for the purposes of an infringement analysis, the Position element of the mark is a very important factor. Furthermore, because the Position of the Mark is an integral part of the Mark itself, the similarity assessment must also include consideration of the Sign’s orientation and position on the goods in question.  

The Judge acknowledged that post-sale confusion was the only form of confusion on which Adidas relied at trial. There was no allegation in this part of the case that consumers would be confused at the point of sale.   

The parties disputed the approach to be taken regarding the relevance of the positioning of the Sign on clothing in the post-sale context. The Judge determined that she could not ignore the position of the TB Four Stripe Design on the TB clothing when assessing post-sale confusion. 

As regards similarity, the Judge said, generally, items of clothing (including footwear) have been recognised as similar to each other owing to the fact that they “have a common purpose because they are all manufactured to cover, conceal, protect and adorn the human body”.

The Judge accepted that there could a range of scenarios in which a defendant’s Sign will be encountered in the post-sale context which raised the following important issues:

First, what are the attributes of the average consumer in this post-sale context? Specifically, are those attributes different from the attributes of the average consumer at the point of sale? The Judge said that prior case law established that at the core of the concept of “the average consumer” in both the point of sale and the post-sale contexts is the assumption that they intend to make a purchase, and this will determine the level of attention that they will be expected to apply. Accordingly, a mere bystander seeing the garments as someone jogs by them wearing a garment could not qualify as “the average consumer”.  

Second, is it legitimate, when considering post-sale confusion, to take into account that there may be circumstances in which the average consumer will display a lower level of attention.

And third, does the post-sale context permit of a hypothetical situation in which the viewer of the defendant’s Sign has only a brief glimpse or an obstructed view of that Sign?

The Judge said the answer to these second and third issues is a test that should be based on the average consumer who is able to perceive the Four Stripe Design in an environment in which they are likely to rely on it – in other words contemplate making a purchase. That will involve at least having a clear view of the garment being worn and of the Four Strip Design on that garment. In that respect it does not matter that some marketing by TB occasionally shows its clothing in positions where the number of stripes is obscured. This is because that is not representative of the typical scenario in a post-sale context.

The Judge also took into account that consumers in the post-sale context would not just see the Four Stripes Design but would see TB’s ribbon design and tailoring label and sometimes the words “Thom Browne New York” emblazoned on garments in large letters. 

The Judge assessed samples of TB’s products for the purposes of assessing infringement by reference to the three elements which were contested between the parties: (a) is TB’s Four Stripe Design at least similar to the trade mark?; (b) is it used by TB in relation to goods or services which are at least similar to those for which the relevant Adidas trade mark is registered?; and (c) does it give rise to a likelihood of confusion on the part of the public?  

The Judge said that as the Adidas Marks are all position marks this affects substantially the analysis on similarity, to the extent that the position will in some cases be decisive on the issue of similarity. In other words, the position of the Three Stripe Mark on the product could on its own render it dissimilar to the Four Stripe Design. 

As a general proposition, the Judge said the average reasonably observant consumer paying a moderate degree of attention will generally perceive the difference between three stripes and four stripes. Stripes may be depicted in many different ways and the average consumer will also be able to perceive differences between the appearance of stripes, their width and the distance between them.

The Judge referred to the following factors on similarity and said the average consumer would at best appreciate a moderate level of visual similarity between the TB’s Four Stripe Design and Adidas’ Three Stripe Marks, though in most of the sample cases it would be low to slight:

• TB’s Signs consist of four stripes and not three.
• Stripes on the TB Signs appear horizontally, sometimes wrapping around part of a garment, rather than vertically down the products as with the Adidas’ Marks.
• Stripes on the TB Signs are at least twice the width of the background stripes, whereas Adidas’ Marks have stripes of about the same width as their background.
• The positions of the Adidas Marks and TB Signs on the products are sometimes entirely different.

In conclusion, the Judge explained that she saw low levels of similarity where TB Four Stripe Designs and Adidas Three Stripe Marks are roughly in the same position on the side of the lower and upper garments and only very faint levels of similarity when the TB Four Stripe Design is hooped horizontally all around legs or arms or used across the front of the chest or around a skirt or horizontally on a bag or wallet. This covered most of the specimen claims.

On a few specimen claims (for bucket hats, bags and shoes) the Judge found a moderate degree of similarity owing, largely, to the vertical orientation of the stripes on the TB Four Stripe Designs. 

On a few sample claims (such as a bobble hat) the Judge found no similarity at all because stripes were of different lengths, appear horizontally on the tail of the cap, and bear no comparison to the Adidas Three Stripe Mark appearing on the visor of a cap which was being relied on by Adidas as a comparator. For this latter category of samples, the assessment of infringement ended there as there was no similarity at all.   

On confusion in the post-sale context, the Judge found there was no real evidence of actual confusion. For example, Adidas could only identify 11 instances of people looking at the TB Instagram account and choosing to say something connected with Adidas. If there was genuine confusion caused by use of Four Stripes, the Judge explained she would have expected to see many more posts on social media evidencing this. And no witnesses making comments on social media were called by Adidas to give evidence at trial.  

The Judge rejected Adidas argument that Four Stripe Design would not be obvious to consumers while the garments were being used, even where it might only be observed relatively briefly when the wearer is engaging in sports activities.

On the issue of a likelihood of confusion, the Judge said the lack of evidence of any actual confusion provided support for the proposition that there is no real likelihood of confusion. Adidas relied on internal emails within TB where employees and Mr Browne addressed issues concerning the use of stripes and risks of confusion. The Judge rejected the suggestion that these emails evidenced a likelihood of confusion. They were instead, for example, addressing concerns that others had about the degree to which Adidas seeks to police the use of stripes rather than the merits of Adidas’ case in that respect.

The Judge also rejected arguments by Adidas of indirect confusion in that consumers might think the use of the Four Stripe Design by TB indicated a connection between TB and Adidas akin to the collaborations that Adidas had with other fashion designers. These collaborations had always involved the Three Stripe Design, so the Judge said it would be odd if consumers thought the use of four stripes would indicate a collaboration such as this. In any event, there was no actual evidence that consumers thought there was such a collaboration, nor any contemporaneous concerns expressed within Adidas to this effect.

The Judge then assessed the position on confusion by reference to categories of products that she had earlier held to at least have some level of similarity (categorised as very faint, very low, low, and moderate to high). The Judge decided that there was no likelihood of either direct or indirect confusion in the post-sale context on the part of a significant proportion of consumers in relation to any of them. A critical factor for the Judge was her finding that the average consumer will notice the difference between three stripes and four stripes and will not be confused. 

For all of the above reasons, the Judge concluded that the infringement claim under Section 10(2) TMA failed. 

Trade Mark Infringement under Section 10(3) TMA

The Judge then considered whether there was trade mark infringement under section 10(3) of TMA. The Judge repeated the classic nine step process that needs to be satisfied in relation to infringement under this head as recently recited in the Court of Appeal decision of Lidl Great Britain Limited v Tesco Stores Limited:

(i) the registered trade mark must have a reputation in the relevant territory; (ii) there must be use of a sign by a third party in the relevant territory; (iii) the use must be in the course of trade; (iv) it must be without the consent of the proprietor; (v) it must be of a sign which is identical with or similar to the trade mark; (vi) it must be in relation to goods or services; (vii) it must give rise to a link between the sign and the trade mark in the mind of the average consumer; (viii) it must give rise to one of three types of injury, that is to say, (a) detriment to the distinctive character of the trade mark, (b) detriment to the repute of the trade mark, or (c) unfair advantage being taken of the distinctive character or repute of the trade mark; and (ix) it must be without due cause.

There was no dispute between Adidas and TB that steps (ii), (iii), (iv) or (vi) were satisfied.  

As to (i) reputation: the Judge decided that Adidas clearly satisfied this to the requisite degree in relation to the Adidas Three Stripe Marks and there wasn’t really any sustained argument about it.

As to (v) similarity of the Adidas’ Three Stripe Mark to the TB Four Stripe Design: the Judge referred to her earlier conclusions on this regarding Section 10(2) TMA infringement and applied them (ie low levels of similarity on most items, moderate similarity on others, and no similarity on a few).

As to (vii) a link between the sign and the trade mark in the mind of the average consumer: here the Judge had to consider the point of sale context. The Judge said that she did not consider that the average consumer would perceive the necessary link between TB’s Four Stripe Design and the Adidas Three Stripe Marks in that context. First, the Judge did not consider the evidence to be remotely sufficient to establish that the average consumer when viewing the TB Four Stripe Design in its stores or on its website would call to mind the Adidas’ Three Stripe Marks. This was because the average consumer in a TB store will be surrounded by references to TB and they would also notice the indicators of TB on the products such as its Ribbon design. In addition, that consumer will be aware that the products are being sold by TB at a very high price point. The Judge explained that the average consumer would view Adidas generally as a mass market brand and would be familiar with its retail channels such as Sports Direct (described as being at “the low end of the High Street”) in contrast to TB’s high end positioning in the market. The Judge also said that the evidence from TB as to how they have structured their website will mean visitors gain a similar impression to the in-store experience. 

The Judge said the combination of these factors rendered it wholly implausible that the average consumer would call to mind Adidas. Even if a few might do so, she did not consider that a significant proportion would do so. 

The Judge further rejected arguments by Adidas that the average consumer in a TB store would think that TB was in a collaboration with Adidas. There was nothing instore to indicate to that effect. Nor could this be discerned from TB’s website, where information about TB’s collaborations is provided with no mention of Adidas.

Because no necessary link was established, the claim under Section 10(3) TMA failed at that step in the process. However, for completeness the Judge went on to deal with the remaining steps.              

As to (viii) the three types of injury: the Judge did not consider that any injury would be caused. 

First, as to detriment to distinctive character, the arguments focused in on allegations of a change in the economic behaviour of the average consumer of the products for which the Adidas Marks are registered consequent on the use of the Four Stripe Design by TB, or a serious likelihood that such a change will occur in the future. The Judge noted that there was no direct evidence of such a change in behaviour amongst Adidas’ customers. She said this was not surprising given the distinctions that had already been mentioned earlier in her judgment between the ways in which, and markets in which, Adidas and TB sold their respective products (High Street versus High End). Nor was a suggestion that this was likely to occur in the future sustainable. There was no realistic basis to say that TB would trade in the future in mass-market sportswear. 

Regarding taking unfair advantage, the Judge said that there was no likelihood of dilution of the Adidas Marks or a basis to say TB was “riding on the coat tails” of the Adidas Marks. Where there was no likelihood of confusion or evidence that the use of four stripes would be perceived as the same as three stripes, the Judge said it would be difficult to conclude that there could be any transfer of image from the Adidas’ Marks to TB in the minds of consumers – this was not a case of one retailer seeking to enhance the attraction of its own goods by adopting an aspect of the get up of another’s goods. In any event, the use of four stripes by TB did not involve the adoption of an aspect of Adidas’ Marks.    

As to (ix) without due cause: the Judge said TB did not advance a case on this in its closing submissions at trial, so it was not necessary to make any decision on it.   

The registered trade mark infringement claims brought under Sections 10(2) and 10(3) TMA 1994 therefore failed. 

Passing Off

The Judge then dealt with the claim in Passing Off.

This was assessed as at 2009 (when TB first started using the Four Stripes Design) and 2020 (when TB produced its “Compression Range” which consisted of a range of tops, shorts and leggings which it was common ground could be used for running and which Addias said represented the “tipping point” for asserting its claims).  

The Judge first dealt with claims to passing off in relation to the three stripes appearing vertically (eg down the length of a sleeve or the side of shorts) (“the Vertical Execution”). She held those claims must necessarily fail in light of her findings in respect of the registered trade marks that there was no evidence of confusion (let alone deception) or any likelihood of this. 

However, Adidas were also claiming Passing Off relying on some of their products using the three stripes appearing horizontally (“the Horizontal Execution”). That representation was not protected by Adidas through registered trade marks. The Horizontal Execution appeared on parts of Adidas’ products such as sleeves, trouser legs and headgear. 

On the existence of goodwill as at 2009 created by the use of the Horizontal Execution in the UK, the Judge said she had to consider whether a significant proportion of the public would rely on the Horizontal Execution by Adidas as guaranteeing the origin of the goods. 

As to the sleeves, there was no evidence of sufficient sales of these products by Adidas in the relevant period to establish the required level of goodwill in the UK. Adidas produced, for example, photographic evidence of use of this Horizontal Execution on football shirts. The Judge said that evidence established that Adidas had been advertising such products very sporadically since 1978. The Judge described other evidence as showing at best a “tiny” level of relevant sales in the UK, which was not sufficient.   

The Judge made similar findings in relation to the use of the Horizontal Execution on legs and headgear. She said the evidence was not remotely sufficient to establish the necessary goodwill for a Passing Off claim.

That part of the Passing Off claim therefore failed.  

The Judge then dealt with the question of the existence of goodwill in the Horizontal Execution as at 2020.

The Judge again dismissed the majority of the claims due to lack of evidence of goodwill. However, the Judge was persuaded that, with regard to use of the Horizontal Execution on short sleeve tops and shorts, Adidas had a sufficient level of goodwill as at 2020. The Judge specifically took into account that the number of Adidas’ sales in 2017 alone for garments sold with horizontal hoops was four times greater than the total number of TB items bearing the Four Stripe Design ever sold in the UK.

As to misrepresentation, Adidas asserted that this could occur not only at the point of sale, but also in the post-sale context. Adidas relied on Freddy SPA v Hugz Clothing where it was held that the defendant’s jeans were “an obvious rip off” of the claimant’s jeans and that this was the defendant’s intention. In that case the court decided that the defendant’s jeans would continue to make misrepresentations as to origin in the past sale context whenever they were worn in public, and those misrepresentations would damage the claimant.

Adidas said this meant that that there can be a misrepresentation post-sale as to a connection between TB’s clothing and Adidas, for example, purely by reason of photographs appearing in the media of celebrities wearing TB garments, or a person walking past another in the street wearing TB clothing. Adidas said such a misrepresentation would cause it damage. 

The Judge found this allegation surprising. She distinguished Freddy SPA v Hugz Clothing, by saying the current case is not one in which TB has sought to “knock off” Adidas’ garments or where TB was aware that consumers will purchase its products in order to pass them off as Adidas products.

In the end the Judge said she need not determine this. Even assuming that Freddy SPA v Hugz Clothing supports Adidas’ approach, the Judge explained that there was no evidence on which to find either a misrepresentation post sale or any damage flowing from that misrepresentation. Nor was there evidence to establish that TB intended the Four Stripe Design to operate as a badge connecting its garments with Adidas or that the ordinary consumer seeing the TB garments would be likely to assume that Adidas is behind TB’s offering. 

The Judge then applied her reasoning in relation to findings of non-infringement of the registered trade marks in the Vertical Executions. The same could be said for the Horizontal Executions in that a substantial proportion of the public would not be deceived by TB’s use of the Four Stripes into believing either that TB’s clothes came from Adidas or that they were part of a collaboration with Adidas or that TB was in some other way connected with Adidas. According to the Judge, Adidas had produced no credible evidence of anyone having been deceived. 

The effect of a “crowded market”

The judgment also considered the issue of a “crowded market” following recent decisions that the effect of a particular motif being commonly seen in the market (in this case, decorative stripes on sports gear) could be relevant to its degree of distinctiveness. In the end, however, this element was not critical to the decision, as the Judge found that the Adidas Three Stripes (at least in the Vertical Execution) had become sufficiently well-known to be distinctive even in a clothing market that was crowded with decorative stripes.

The full case report is here:

Thom Browne Inc & Anor v adidas AC & Ors [2024] EWHC 2990 (Ch) (22 November 2024)

This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Farrer & Co LLP, December 2024