Thom Browne Inc & Anor v Adidas AG & Ors
[2024] EWHC 257 (Ch)
Thom Browne Inc & Anor v adidas International Marketing BV & Ors
22 November 2024
[2024] EWHC 2990 (Ch)
High Court
Thom Browne and Adidas fought in court over similar-looking stripes on their clothes. The judge said some of Adidas's trademarks were too vague, and even though the designs were a bit alike, there wasn't enough proof that customers would get confused or that Thom Browne was unfairly copying Adidas. So, the judge ruled against Adidas.
Key Facts
- •Thom Browne Inc and Thom Browne UK Limited (TB) sought to invalidate 16 adidas trademarks (adidas Marks).
- •Adidas counterclaimed for trademark infringement and passing off.
- •The dispute centered on the similarity between TB's "Four Bar Design" and adidas' "Three Stripes" marks.
- •The case involved a detailed analysis of trademark registrability, genuine use, distinctive character, and likelihood of confusion.
- •The court considered various specimen items from TB's product range, including those from its Compression Range.
- •The case involved a large volume of evidence, including witness statements and documents, resulting in significant case management issues.
Legal Principles
Registrability of a trademark requires a sign capable of being graphically represented and distinguishing goods/services.
Trade Marks Act 1994, sections 3(1) and 47(1)
A trademark must be clear, precise, unambiguous, and uniform; variations are permissible only if they do not undermine these requirements.
Société Des Produits Nestlé S.A. v Cadbury UK Limited [2013] EWCA Civ 1174
Genuine use of a trademark requires actual use, more than tokenistic, consistent with the mark's function, and in accordance with its commercial raison d'être.
easyGroup v Nuclei [2023] EWCA Civ 1247
Trademark infringement under section 10(2) TMA requires use of a similar sign for identical or similar goods, creating a likelihood of confusion.
Trade Marks Act 1994, section 10(2)
Trademark infringement under section 10(3) TMA requires a reputation in the UK, use of a similar sign without due cause, taking unfair advantage or being detrimental to the mark's character or repute.
Trade Marks Act 1994, section 10(3)
Passing off requires proof of goodwill, misrepresentation leading to belief that goods are those of the claimant, and damage.
Reckitt v Colman Products Ltd v Borden In c (No 3) [1990] 1 WLR 491
Outcomes
Several adidas Marks declared invalid for failing to meet registrability requirements.
The marks lacked sufficient clarity and precision, particularly regarding the positioning and variations of the "Three Stripes" design.
Partial revocation of specifications for some valid Marks to reflect genuine use.
Adidas had not genuinely used the Marks for all goods specified; specifications were amended to reflect actual use.
Adidas's claims for trademark infringement (sections 10(2) and 10(3) TMA) dismissed.
Insufficient evidence of likelihood of confusion or that TB's use took unfair advantage of or was detrimental to adidas's marks.
Adidas's claim for passing off dismissed.
Insufficient evidence of goodwill in the Horizontal and Headgear Executions of the Three Stripes, misrepresentation, or damage.
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