Thom Browne Inc & Anor v adidas International Marketing BV & Ors
[2024] EWHC 2990 (Ch)
Thom Browne Inc & Anor v Adidas AG & Ors
8 February 2024
[2024] EWHC 257 (Ch)
High Court
Two companies are fighting over trademarks. They agreed to a shorter trial using only some examples of the products, but they can't agree which examples to use. The judge said neither side's plan is good enough and wants them to work together to pick better examples so the trial can be fair and not too long.
Key Facts
- •Thom Browne Inc and Thom Browne UK Ltd (Thom Browne) sued Adidas AG and related companies (Adidas) for revocation/invalidation of 16 registered trademarks.
- •Adidas counterclaimed for trademark infringement and passing off based on Thom Browne's use of a four-bar design (TB Sign).
- •Adidas initially identified 32 allegedly infringing items but later expanded to over 1000 items found on Thom Browne's website.
- •The parties initially agreed to a 'trial by specimen' approach but failed to agree on a framework for selecting specimen items.
- •Adidas proposed categorising products and selecting a limited number of examples per category, while Thom Browne proposed a stricter approach where a single non-infringing example would invalidate the entire category.
Legal Principles
Liability in intellectual property infringement claims is commonly determined by reference to samples or specimens. The court retains the power to determine allegations of infringement not determined at the liability trial.
Various cases including Unilin Beheer BV v Berry Floor NV [2007] EWCA Civ 364, AP Racing v Alcon Components [2016] EWHC 815 (Ch), Warner Music UK Ltd v TuneIn Inc [2019] EWHC 3374 (Ch), Original Beauty Technology v G4K Fashion Ltd [2021] EWHC 294 (Ch), and Weiss Technik UK Ltd v Davies [2022] EWHC 2773 (Ch).
Outcomes
The court refused to make an order on the parties' competing proposals for the trial by specimen framework.
The court found that Adidas' proposed categories did not correspond to legally relevant characteristics, increasing the risk of protracted and costly negotiations after the liability trial. Thom Browne's proposal was considered unfair due to its potential to lead to paradoxical results. The court suggested that Adidas should provide a summary of the infringement basis for each item, allowing for a mutually agreed framework based on legally relevant characteristics.
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