A Fashionable Battle: Unraveling the Legal Dispute Between Thom Browne and Adidas
The Clash of Stripes and the Law
In a landmark case, the Court of Appeal ruled on the validity of Adidas' 'position marks,' specifically their iconic three stripes. This decision not only impacts the fashion industry but also sets a precedent for trademark law. The case, Thom Browne -v- Adidas, delves into the intricate world of intellectual property and the fine line between creativity and infringement.
The Story Unveiled
Thom Browne, the luxury fashion brand, has been locked in a series of disputes with Adidas since 2007, primarily over the use of stripes on clothing. These legal battles have spanned across continents, from the EUIPO to courts in the United States and the Netherlands.
The crux of the matter lies in the unique design elements of each brand. Thom Browne's signature four-bar design, often asymmetric and horizontal, adorns their garments. In contrast, Adidas is synonymous with its three stripes. The dispute centered around Adidas' position marks, which depicted three stripes vertically along garments, bags, and accessories.
The Legal Journey
In November 2024, the High Court ruled in favor of Thom Browne, dismissing Adidas' claims of trademark infringement and passing off. The court also invalidated eight of Adidas' marks due to a lack of clarity and precision in their descriptions, a crucial requirement for trademark registration.
This case marked the first time an English court specifically addressed the registrability of position marks. With no prior English case law to guide them, the judge, Joanna Smith J, acknowledged the complexity of the issue and granted Adidas permission to appeal.
Adidas appealed on four grounds, arguing that the High Court judge had erred in their interpretation of the law and the nature of the marks.
The Court of Appeal's Verdict
The appeal focused on six of Adidas' position trademarks. The court had to define and understand 'position marks,' a term with no clear legislative definition in the UK. The parties agreed that position marks consist of a visual element and its specific position on goods, with their distinctive character stemming from this unique positioning.
Arnold LJ, the presiding judge, outlined the three conditions for trademark registrability, primarily derived from CJEU case law. A trademark must be a sign, capable of graphical representation, and able to distinguish goods or services. These conditions are separate from other criteria like distinctive character and genuine use.
The court examined the pictorial representations and written descriptions of the position marks together. While the images seemed clear, the written descriptions indicated that the marks were not limited to the pictured appearance but included three stripes along one-third or more of a garment, sleeve, or leg. Arnold LJ ruled that a written description encompassing multiple signs fails to meet the fundamental condition of being a single, clear sign.
Regarding the four grounds of appeal, the Court of Appeal:
- Clarified that the High Court judge did not reject the marks due to variations but because these variations were impermissible.
- Dismissed Adidas' argument that the degree of variation was overstated, noting that Adidas itself described the pictorial representation as merely an example of the written description.
- Found no inconsistency in the judge's reasoning.
- Confirmed that the judge considered the origin message of the trademarks but that evidence of use was not necessary for determining registrability.
The Broader Impact
This case provides crucial guidance on the registrability of position marks, a novel category of trademarks. It emphasizes that these emerging marks are subject to the same clarity and precision requirements as traditional trademarks.
The judgment serves as a caution against overreaching in trademark registrations. It underscores that the purpose of trademark registration is to protect specific, clearly defined registrations, not to grant a monopoly on abstract concepts. The court's decision draws a clear line between permissible variations within a single sign and the admission of numerous possible iterations, which could lead to invalidation.
On the same day, Arnold LJ also delivered a leading judgment in Babek v Iceland, further emphasizing the importance of clarity and precision in trademark representation and description.
Mishcon de Reya proudly represents Thom Browne in these proceedings, navigating the complex world of fashion and intellectual property law.
