Thom Browne Inc & Anor v adidas International Marketing BV & Ors

A position trade mark is not invalid merely because its registration permits some variation. The question is whether the mark, read as a whole, conveys clear and precise information to the registrar, competitors and the relevant public, and remains capable of indicating origin. Variations become impermissible where the scope of protection is objectively uncertain or encompasses unrepresented signs.

In post-sale infringement analysis, the relevant consumer remains the average consumer who would rely on the sign when deciding whether to acquire the goods. The court should use a realistic and representative context, not an occasional fleeting or obscured view. A difference in the number, orientation, proportions and position of stripes may prevent confusion even where the goods are identical.

Thom Browne Inc and Thom Browne UK Ltd sought invalidity and, in limited respects, revocation of sixteen adidas position marks consisting principally of three stripes on clothing, footwear, headgear and bags. adidas counterclaimed for infringement under sections 10(2) and 10(3) of the Trade Marks Act 1994 and for passing off in respect of Thom Browne’s Four Bar Design.

The principal issues were whether the registrations defined clear and precise signs; whether adidas had shown genuine use and acquired distinctiveness; whether the Four Bar Design was similar enough to give rise to confusion or a link; and whether adidas had goodwill in further horizontal and headgear executions. The court also considered honest concurrent use and whether the 2020 Compression Range required a fresh assessment.

1. Invalidity. The court held that Tracksuit Top Marks 808, 588 and 095, Tracksuit Bottom Marks 093 and 661, Vest Marks 092 and 612, and Bag Mark 889 failed the identification requirements under section 1(1) of the Trade Marks Act 1994. Their descriptions and illustrations permitted uncertain and unrepresented variations, including uncertainty as to the starting point, finishing point and position of the stripes. Mark 168 and the Shoe, Slide and Cap Marks were sufficiently confined by their illustrations and remained registrable.
2. Applicable test. A mark is not invalid merely because it allows variation. The court must assess the mark as a whole and ask whether the variations impair clarity, precision, objectivity, accessibility, uniformity or the ability of the relevant public to perceive and recall a particular sign and repeat a purchase. The registration must not confer an uncertain competitive monopoly.
3. Distinctiveness and revocation. All marks had acquired distinctive character by 30 July 2021. The court ordered partial revocation of specified goods, including “sweaters”, “leisure wear”, “leisure footwear” and “travel bags”, while retaining “sports wear”, “sports shoes” and “bags for sports” where the evidence justified those descriptions.
4. Section 10(2). The Four Bar Design was dissimilar to some marks and showed only low, very low or very faint similarity to others. Similarity depended materially on the position, orientation, number and proportions of the stripes. The average consumer would generally notice the difference between three and four stripes. In the post-sale context the court rejected fleeting, obscured or “bunched” views as non-representative. There was no likelihood of direct or indirect confusion.
5. Section 10(3) and passing off. adidas failed to establish the required link, injury, misrepresentation or damage. It had only limited goodwill in specified horizontal executions as at 2020 and no sufficient goodwill in the wider horizontal or headgear executions. adidas’s claims under sections 10(2) and 10(3), and its passing-off claim, were dismissed.
6. Honest concurrent use. The long period of peaceful parallel trading, adidas’s knowledge of the Four Bar Design and absence of timely objection supported honest concurrent use. The Compression Range did not materially alter the established field of activity and did not require a fresh global assessment.

First-instance decision of the High Court. The judgment itself records no appeal.