High Court Addresses Management of Trademark Infringement Claims in Thom Browne v Adidas Case

Citation: [2024] EWHC 257 (Ch)
Judgment on

Introduction

In the case of Thom Browne Inc & Anor v Adidas AG & Ors, Master Clark was approached in the High Court with an intellectual property dispute that raises significant questions on managing infringement claims concerning a large number of items. The claimants, Thom Browne Inc & Anor, and defendants, Adidas AG & Ors, sought to determine the trial framework for addressing allegations of trademark infringement and passing off by Adidas in relation to Thom Browne’s use of a four-bar design (TB Sign) on its clothing items. This presented a substantial issue in terms of what method the court should adopt to manage the assessment of liability for a large scope of items, nearly 1000, to ensure a just, cost-effective, and timely resolution.

Key Facts

  1. Thom Browne group alleged that 19 Adidas trademarks should be revoked and/or invalidated, with Adidas counterclaiming for trademark infringement and passing off.
  2. Adidas listed nearly 1000 items as infringing its trademarks and the scope of claims could increase after disclosure.
  3. The main dispute revolved around the selection and agreement of specimen items, or categories of items, to determine infringement liability at trial.
  4. Adidas and Thom Browne proposed different frameworks for selecting specimen items—Adidas suggested items be grouped into broad categories irrespective of infringement reasons, while Thom Browne sought a binding determination where if one example in a category is non-infringing, the entire category is considered non-infringing.

Several legal principles are key to understanding the issues at hand:

  • Sample or Specimen Determination: Typically, intellectual property claims can be handled by examining a sample or specimens to establish infringements without requiring a claimant to present every possible instance of infringement (Warner Music UK Ltd v TuneIn Inc).

  • Subsequent Determination of Infringements: It’s established that claims not determined at trial can be examined in a damages inquiry or account of profits, as a convenience to avoid issuing new proceedings (Unilin Beheer BV v Berry Floor NV).

  • Justice and Convenience: In the damages inquiry, if instances arise that need liability determination, the court conducts this keeping in mind justice and convenience (Fabio Perini SpA v LPC Group Plc).

  • Efficient Case Management: The court might bind the parties to select categories based on legally relevant characteristics to facilitate just extrapolation from the judge’s findings on liability (Weiss Technik UK Ltd v Davies).

Outcomes

Master Clark’s judgment did not provide a final resolution but emphasized the need for the parties to agree on a trial model that aligns with the principles of proportionality and efficiency. She indicated that grouping items into categories without legally relevant characteristics raises potential challenges in extrapolating the findings to non-sampled items, suggesting that the parties might specify the basis on which each item is alleged to infringe or pass off to facilitate the category setup.

Conclusion

The case underscores the importance of precision and clear case management strategies in intellectual property litigation, particularly when managing a large number of alleged infringements. It highlights the court’s preference for categories linked to legally relevant characteristics of alleged infringements, thereby enabling fair and logical extrapolation of trial findings to other items. This approach seeks a balance between thoroughness and the practical need for efficiency in judicial processes. The court’s guidance opens a pathway toward a practical resolution but makes clear that if the parties cannot agree on an approach, further court intervention may be necessary.