Can three be confused with four? Thom Browne v Adidas: court takes trade mark position on four v three stripes

One of the most famous fashion marks in the world is Adidas’ three stripes.

For many years, Adidas has engaged in litigation around the world to protect its three stripes mark. In recent times, it has taken exception to the fashion brand Thom Browne’s use of four stripes.

Last month, this came to a head in the English High Court, where judgment was given in the latest battle between Adidas and Thom Browne. 

The two issues in the judgment were: (1) Adidas’ registration of ‘position trade marks’; and (2) whether there was a confusing similarity between Adidas’ three stripes and Thom Browne’s four stripes.

A registered trade mark protects a brand identifier for the products and/or services for which it is registered. A position trade mark is a type of trade mark which protects a brand identifier in a specific position on a product.

Showing position marks on the trade marks register can be tricky. In this case, Adidas had provided a description alongside the image of each mark. In the first decision by the English courts on position trade marks, the Court confirmed that registration of position trade marks was possible, but in this case some of Adidas’ registered trade marks were invalid.

Can a trade mark for three stripes be valid?

UK trade marks need to be represented clearly and precisely to show the scope of protection. In respect of Adidas’ trade marks, the Court accepted that eight registrations were valid. However, another eight were invalid.

Examples of invalid Adidas trade marks

Tracksuit tops

The three trade marks had been registered with descriptions which referred to stripes running along “one third or more” of the sleeve, or running down “substantially the whole length” of sleeves, legs and/or trunks. The description for two of these trade marks also referred to the illustrations (shown left). 

 

     

However, the Court decided that these three trade marks were invalid as the description wording meant there could be numerous variations in the stripes (e.g. where they began and ended and their length) which the illustrations (treated by the Court as examples) did not show. It was also unclear how the stripes would apply to other items (e.g. trousers, sleeveless clothing or short sleeves) which the illustration did not show but were referred to in two of these three trade marks.

 

Tracksuit bottoms

The descriptions for two of these trade marks referred to stripes running along “one third or more of the length of the side”. One of these two trade marks also referred to the illustration. This led to uncertainty for similar reasons as the tracksuit tops and, as a consequence, these two marks were found to be invalid. For similar reasons, two vest trade marks with the “one third or more” wording were also invalid. 

In contrast, the (dark) tracksuit bottoms trade mark shown on the right was valid as the description and the illustration were found to be sufficiently clear and did not indicate that the stripes could be different lengths or positions. 

Bags

The description referred to stripes “generally used vertically” and “The example shown…demonstrates the relative proportion”. This mark was invalid as the description stated that it was only an example and there could be multiple variations in the stripe positions, which the illustration did not show. It was also unclear how the mark would apply to other items (e.g. wallets) which were not shown in the illustration.

In contrast, the EU Intellectual Property Office’s Cancellation Division had previously decided that three equivalent trade marks for Adidas’ tracksuit top, bottom, and vest were valid (although these decisions are being appealed by Thom Browne). 

This decision also demonstrates the willingness of the UK Courts to diverge from EU decisions post-Brexit. 

Examples of valid Adidas trade marks

Caps

The description referred to “three stripes applied on a cap visor, as shown in the illustration, the shape of the cap as such does not form part of the mark”. This trade mark was found to be valid as it was clear that the stripes were to be in the middle of the visor vertically and the scope was limited to the illustration. 

 

 

Shoes

The description referred to “three parallel equally spaced stripes applied to footwear, the stripes positioned on the footwear upper in the area between the laces and the sole”. This mark also was found to be valid as the illustration and trade mark description were sufficiently clear, including regarding the start and end and length of the stripes. Three other shoe trade marks and two slider trade marks were also found to be valid. 

Infringement

The question then was whether Adidas’ three stripe position trade marks and Thom Browne’s four stripes were confusingly similar. We include below some example Thom Browne products from the case before the High Court.

The Court considered that Thom Browne had not infringed Adidas’ trade marks. Being position trade marks, the Court decided that position and orientation could be vital in assessing similarity. Therefore, as examples, the Court found moderate similarity between each party’s hats, shoes and bags, because the stripes were positioned vertically (like Adidas’ stripes). However, the Court considered that the average consumer could distinguish differences in the pattern of stripes (e.g. appearance, width, distance). Therefore, they would notice three stripes versus four (even if they only had six seconds), when Thom Browne’s stripes were “chunkier” or looked hooped, and when the stripes were positioned horizontally (unlike Adidas’ stripes).  

Adidas’ separate arguments relating to its reputation and goodwill did not override the Court’s finding on dissimilarities. 

Adidas is appealing the Court’s decision and we will therefore be hearing more on this! The outcome of the appeal could further impact the interpretation of position trade marks.

Key takeaways

• Brands which regularly use brand identifiers in certain positions can register trade marks for the position of that mark. 
• Be careful and seek assistance when registering position trade marks, as trade marks must be represented and described clearly and precisely. 
• A registered trade mark can (in principle) be renewed indefinitely every ten years.
• Trade marks can be easier to rely on than unregistered rights, as you would have a trade mark certificate rather than having to prove the elements of unregistered rights. 
• Registration can make enforcing a position mark easier against a competitor using a confusingly similar mark in a similar position.