Thom Browne Inc & Anor v Adidas AG & Ors

In intellectual property litigation, liability may be determined by reference to specimens where this provides a proportionate and workable trial. Categories of specimens should reflect the legally relevant characteristics relied upon to establish infringement or passing off, so that findings can be extrapolated meaningfully to other items. Categories based only on types of goods may create an unacceptable risk of further costly and protracted liability disputes. A framework which treats one specimen as determinative of an entire category is permissible in principle, but the resulting unfairness and risk of false outcomes must be weighed against the benefits of proportionate case management.

The claimants sought revocation or invalidation of registered trade marks owned by the defendants. The defendants counterclaimed for trade mark infringement and passing off concerning products bearing the claimants’ four-bar sign.

The parties agreed that the counterclaim should be tried by reference to specimen items, but disagreed about the framework. The defendants proposed categories based principally on types of goods, with selected examples and later extrapolation. The claimants proposed that liability for whole categories should follow from the outcome for the selected examples. The court was asked to give case-management directions.

1. Case-management framework. The application concerned case management and was governed by the overriding objective of dealing with the case justly and at proportionate cost. Determining liability for every allegedly infringing item, numbering nearly 1,000 and potentially more, would be disproportionate.
2. Trial by specimen. It was established that intellectual property liability may commonly be determined by samples or specimens. The court may also determine further allegations after the liability trial where justice and convenience require it. The authorities, including Unilin Beheer BV v Berry Floor NV [2007] EWCA Civ 364, AP Racing v Alcon Components [2016] EWHC 815 (Ch) and Warner Music UK Ltd v TuneIn Inc [2019] EWHC 3374 (Ch), supported a flexible and proportionate approach.
3. Appropriate categories. Categories should reflect the defendants’ case as to why the products infringe or amount to passing off, by reference to legally relevant characteristics. Categories based merely on trousers, jackets, shoes and other types of goods did not correspond to the registered goods or to the relevant features of the pleaded infringement and passing-off allegations. Without legally relevant categories, findings on specimens might not be capable of meaningful extrapolation.
4. Risk allocation. The claimants’ proposal, under which one non-infringing specimen could cause an entire category to fail, created a risk of treating infringing products as non-infringing. The approach in Weiss Technik UK Ltd v Davies [2022] EWHC 2773 (Ch) showed that this was not conclusive, but the risk had to be weighed against proportionality and the number and nature of the items.
5. The court declined to impose immediately the proposed direction requiring a summary for each item in the defendants’ search results, giving the defendants an opportunity to consider that approach and seek agreement. No order was made on the application except for the common elements of the proposed framework concerning agreement of categories and selection of examples. The parties remained able to seek further directions if agreement could not be reached.