Stripe Wars: Thom Browne Triumphs Over Adidas in Landmark Case

Key Issues

 

The High Court’s analysis revolved around several critical issues:

 

1. Likelihood of Confusion: The judge emphasised the importance of considering the overall impression of the marks rather than focusing solely on their similarities. Factors such as the positioning, context, and target market of the designs were evaluated.
2. Distinctiveness of the Adidas Trade Marks: Adidas’ three-stripe trade marks were scrutinised to determine their scope of protection. The High Court acknowledged that while the three-stripe design was iconic, it was not inherently unique to Adidas and required acquired distinctiveness to be enforceable.
3. Bad Faith: Thom Browne argued that Adidas’ enforcement strategy reflected an attempt to monopolise simplistic design elements and stifle competition.

 

Thom Browne

 

Adidas

 

The High Court’s Findings

 

The High Court ruled in favour of Thom Browne, dismissing Adidas’ claims of trade mark infringement and passing off. The key findings include:

 

• No Likelihood of Confusion: The average consumer would not confuse Thom Browne’s four-stripe design with Adidas’ three-stripe trade mark. The differences in the designs, coupled with the distinct positioning of the brands in the market, were sufficient to negate confusion.
• Invalidation of Adidas Trade Marks: Eight of Adidas’ trade marks were invalidated due to lack of clarity and precision. The High Court underscored that trade marks must be clear and unambiguous to define the scope of protection adequately.
• Good Faith of Thom Browne: Thom Browne’s long-standing use of the four-stripe design and its consistent branding strategy demonstrated good faith. The High Court acknowledged that Thom Browne had established its design as a distinctive feature of its brand, independent of Adidas.

 

Broader Implications

 

What are the broader implications for trade mark law and brand management:

 

1. Clarity and Precision in Trade Mark Applications: The invalidation of several Adidas trade marks serves as a reminder for brand owners to ensure that their applications are clear and precise. Overbroad registrations may be deemed invalid, limiting the enforceability of the marks.
2. Consumer Perception as a Key Determinant: The ruling highlights the importance of consumer perception in assessing the likelihood of confusion. Courts are likely to consider factors such as market context, brand positioning, and the overall impression of designs.
3. Balancing Brand Protection and Competition: This case underscores the need to balance the legitimate interests of brand owners with the principles of fair competition. Attempts to monopolise common design elements may face legal challenges, particularly if they hinder innovation and competition.
4. Impact on Fashion and Design Industries: The decision is particularly relevant to the fashion and design industries, where minimalist and geometric patterns are prevalent. Brand owners must carefully consider the distinctiveness of their designs and avoid overreaching trade mark claims.

 

Conclusion

 

The case serves as a cautionary tale about the risks of overreaching trade mark claims. It also reaffirms the need for a strategic approach to intellectual property protection, ensuring that trade marks are both defensible and enforceable in a competitive marketplace.

 

It’s also worth noting that Adidas brought claims for trade mark infringement against Thom Browne in the US and Germany, which were also unsuccessful.

 

If you’d like to discuss your trade marks, please get in touch.