The High Court has delivered its judgment in the UK dispute between luxury fashion brand, Thom Browne, and adidas. Finding in favour of Thom Browne, the High Court concluded that several of adidas' position trade marks relating to its three stripe design were invalid, and also rejected adidas' claim for trade mark infringement and passing off. The proceedings are part of a multi-national dispute between the parties, and this most recent decision follows findings that Thom Browne was not liable for trade mark infringement in the New York District Court and the District Court of Nuremberg.
The case raises a number of interesting questions around issues such as the treatment of position marks, as well as the assessment of alleged likelihood of confusion in a post-sale, as opposed to a point of sale context, and the effect of showing that use of a given sign was "honest concurrent use" with a registered trade mark.
Background
Sporting giant adidas manufactures and sells sports clothing and footwear featuring three stripes. It owns a number of UK registered trade marks in the form of 'position marks', which comprise a graphical representation of three stripes placed in specific positions on footwear, clothing (tracksuit tops and bottoms and vests), headgear and bags, together with an accompanying written description. The registered trade marks relied on by adidas showed the stripes vertically, e.g. along the length of a jacket sleeve or trouser leg. Thom Browne, Inc. is a luxury fashion designer and tailoring business based in New York, founded by the designer Mr Thom Browne in 2003. Mr Browne is particularly well known for his creative and innovative designs, including some memorable outfits worn by celebrities at the Met Gala ball in recent years.
Many of the Thom Browne designs feature a four-bar motif – typically placed on just the left sleeve or leg of a garment and going around rather than along the length of the relevant arm or leg. A former competitive swimmer, Mr Browne had initially adopted a three-bar design on his clothing designs in order to evoke varsity sweaters but, following informal contact from adidas in 2007, the current four-bar motif was used for the first time in the UK in 2009. Since that date, it had been used by Thom Browne without any further intervention by adidas, until the current dispute between the parties began a decade later, in 2018.
Following disputes in various Courts and registries around the world, Thom Browne instituted the UK proceedings seeking cancellation and/or revocation of a number of adidas' UK registered position marks. adidas counterclaimed, arguing that Thom Browne's four-bar motif infringed its registered trade marks and also constituted passing off. The case focused on twenty-four specimen Thom Browne items that were alleged by adidas to infringe.
The judge (Mrs Justice Joanna Smith) upheld Thom Browne's validity challenges to several adidas position marks. Further, even if all of the marks had been found valid, she confirmed that she would also have rejected adidas' claim to trade mark infringement, alongside its passing off claim.
The Court's decision
adidas position marks invalid for failing to meet registrability requirements
Thom Browne challenged the validity of various adidas position marks on the ground that they were insufficiently clear, precise, specific and accessible to be capable of registration as a mark. The Court agreed that a number of adidas position marks, as graphically represented on the register alongside the relevant wording used in the descriptions, impermissibly lay claim to a multiplicity of signs of visually different permutations using three stripes. As it was not possible to determine the precise subject of protection afforded by these marks, they were found to be invalid. Examples of objectionable wording in the accompanying descriptions included wording such as "the stripes running down significantly the whole length…" of the relevant garment, as well as references to use of the stripes on garments which were described, but not included in the illustration. Meanwhile, in relation to an adidas position mark for a bag, the offending imprecise wording in the description included that the mark "consists of three parallel equally spaced stripes generally used vertically on a product covered by the specification".
The Court concluded that such wording (and similar language in the other relevant descriptions) would leave the public "scratching their heads" as to what the affected signs actually were and how they should appear. Accordingly, those marks were invalid. This was not the case for all of the marks, however, (the position marks registered in respect of shoes, slides and caps, did not fall foul of the identification requirement).
Partial revocation on the grounds of non-use
Given the finding that a number of the marks were invalid, the Court's decision on revocation was largely academic, but the Judge concluded that adidas had not demonstrated genuine use of all of its trade marks across the scope of goods for which they were registered. The specifications of the relevant trade marks were therefore amended, with various terms such as "sweaters", "travel bags", "leisure wear" and "leisure footwear" being removed.
No trade mark infringement
The Court went on to consider adidas' claim for trade mark infringement on the basis that the marks were all valid. This gave rise to a number of interesting points, in particular, in relation to the assessment of the post-sale context in which the average consumer might encounter the Thom Browne signs.
Whilst there were some low or faint levels of similarity between the adidas marks and the Thom Browne signs (and a moderate degree of similarity for certain signs), and the goods were deemed to be similar, the Court concluded that there was no trade mark infringement on the basis of a likelihood of confusion. In particular, the reasonably observant and circumspect consumer of clothing, footwear, and related accessories, paying a moderate degree of attention, would generally perceive the difference between three stripes and four stripes. And, if that average consumer were given six seconds (as adidas had suggested), the Court concluded that they would have no difficulty in perceiving the difference between them.
adidas did not argue at trial that there was a likelihood of confusion at the point of sale (although it had done so previously). Instead, it argued that there would be confusion in the post-sale situation, with the average consumer paying "an even lower level of attention" when encountering items of clothing, footwear and accessories bearing the Thom Browne signs in that setting. The Court of Appeal has recently considered the issue of post-sale confusion in the Iconix case (where permission to appeal to the Supreme Court has been granted) in relation to logos on football boots, where the Court considered that a realistic and reasonable perspective for the average consumer looking at the sign would be looking down at the football boot when being worn.
Here, Mrs Justice Joanna Smith set out a number of principles relevant to the assessment of post-sale confusion in the analysis of whether there is a likelihood of confusion. In particular, the Judge stressed that post-sale confusion "does not give rise to a different assessment with a different form of hypothetical consumer having a different attention span". Instead, the average consumer in the post-sale context would have the same attributes as the average consumer at the point of sale. This meant that they would not, contrary to adidas' submissions, display a lower level of attention than in the point of sale context. Further, the average consumer in the post-sale scenario would see the sign on clothing as it was worn by another person, with the four-bar motif seen in full and in its intended orientation. This meant that the Court was not required to consider the perception of someone who only got a fleeting, or obscured glance of the product (such as someone moving past at speed wearing a product from the Thom Browne Compression Range, as suggested by adidas).
Even though both the adidas marks and Thom Browne signs had been used over a period of years (including, in some cases, in the same retail outlets, such as Harrods and Selfridges), and had both been subject to constant media and social media attention, there was no evidence of actual confusion arising. adidas sought to rely upon a small number of comments on social media, but several of those commentators were not based in the UK and, in fact, their comments demonstrated awareness of an existing dispute between adidas and Thom Browne. adidas' reliance on certain internal Thom Browne emails was also rejected as not amounting to credible evidence of a risk of confusion.
adidas also argued that Thom Browne's four-bar motif took advantage of the reputation of adidas' trade marks or harmed their distinctive character or reputation, but this claim was also rejected. The Court concluded that the necessary link was not made out – the average consumer in the UK when viewing the Thom Browne signs in a store would not call the relevant adidas marks to mind. Further, even if a link were established, adidas was unable to show that the use of the Thom Browne signs would cause any injury to the adidas marks.
No passing off
adidas's claim of passing off, in relation to use of three stripes in both a vertical and horizontal execution, failed for the same reasons as its claim to trade mark infringement. It had not shown that there had been any misrepresentation by Thom Browne.
Honest concurrent use
Lastly, even if the Court had found the Thom Browne signs to be infringing or to amount to passing off, Thom Browne would have been able to rely upon an argument that its use of the four-bar motif was honest concurrent use with adidas' three-stripe mark (as a further factor pointing away from a conclusion of infringement).
adidas was "well aware" of Thom Browne's use of the four-bar motif from 2009 but it chose to make no further complaint and took no action (having previously complained informally in 2007 about the use of a three-bar motif). The Court inferred that adidas had taken no action because it did not consider the four-bar motif to be infringing, and because it was prepared to co-exist with Thom Browne. Indeed, if either side was seeking to encroach on the other's territory, the Court suggested this was in fact adidas, given its development of its Neuclassics Range in 2022. Evidence submitted just weeks before the trial revealed that photographs of Thom Browne clothing appeared in the slide deck created by adidas during the development of this range, confirming that those products formed part of the inspiration and motivation for the designs.
Comment
The fact that the adidas trade marks were "relatively rare" position marks substantially affected the analysis of similarity between the marks, and the goods. It is noteworthy that the only registered trade marks at issue which were not declared to be invalid were those where the position of the mark itself was clear from the graphical representation on the register: there was no scope in the description for differences in the precise description of the placement of the three stripes on footwear, for instance, and the scope of those marks were confined to the illustrations on the register.
As is the case with many IP disputes, a large range of products were potentially at issue. This judgment (together with the interim judgment of Master Clark dated 8 February 2024) also provides important guidance about how potentially wide-ranging claims can be determined by reference to specimens.
Mishcon de Reya acted for Thom Browne in these proceedings – read more here.