Thom Browne Inc & Anor v Adidas AG

Trade mark registrability requires the subject matter to be a sign, capable of graphic representation and capable of distinguishing the relevant goods or services. These are independent and cumulative requirements.

A written description may allow limited permissible variation. Variants absent from a pictorial representation are not automatically fatal. However, where the description embraces a multiplicity of signs, or leaves the sign’s scope and positioning unclear, the registration fails. Words may be clear in themselves yet unclear in their practical effect. Acquired distinctive character cannot cure this defect because registrability is logically anterior to distinctiveness. For position marks, the position of the visual element must be sufficiently specified.

Thom Browne Inc and Thom Browne UK Limited challenged 16 adidas registrations featuring three stripes on clothing, footwear, bags or hats. They sought declarations of invalidity, alternatively revocation, on grounds including lack of registrability, lack of distinctive character and non-use. adidas counterclaimed for trade mark infringement and passing off.

Mrs Justice Joanna Smith held eight registrations invalid for lack of registrability, including the six registrations challenged on this appeal, and dismissed adidas’s counterclaim: [2024] EWHC 2990 (Ch). The appeal concerned whether the six registrations identified a sign and represented it with sufficient clarity and precision, particularly where the written descriptions extended beyond the pictorial representations.

1. Appeal dismissed. The Court of Appeal held that the judge made no error of law or principle in declaring the six registrations invalid.
2. Under section 1(1) of the Trade Marks Act 1994, Article 2 of the Directive and Article 4 of the Regulation, registrability requires three independent and cumulative conditions. The subject matter must be a sign. The sign must be capable of graphic representation. It must also be capable of distinguishing the goods or services of one undertaking from those of others.
3. For the first condition, the question was whether the registrations identified a single sign whose appearance could vary within permissible limits, or instead covered a multiplicity of signs. The fact that a written description allowed variants not shown in the pictorial representation was relevant, but not automatically fatal. The assessment was one of fact and degree. No bright-line rule required every permissible variation to be depicted.
4. For the second condition, the representation had to be clear, precise, self-contained, easily accessible, intelligible, durable and objective. Authorities and economic operators had to be able to determine the subject matter and scope of protection. Clear words could nevertheless have an unclear effect where, read with the pictorial representation, they created a puzzle or multiple possible signs. This uncertainty could confer an unfair competitive advantage.
5. The six registrations were properly interpreted as allowing variation in the length, starting point, ending point and position of the stripes. The judge was entitled to conclude that they did not identify one clear sign and were not represented with sufficient clarity and precision. Any error in the additional observation that the stripes might appear on the underside of a sleeve was immaterial. The judge had also considered the impact of the variations on the origin message.
6. Whether the subject matter was a trade mark was logically anterior to acquired distinctive character. Evidence of use therefore could not cure the registrability defect or provide a useful cross-check where it did not show how the public understood the descriptions or that all covered variants conveyed the same origin message. The decisions of the Cancellation Division and the District Court of The Hague did not establish any error by the judge. The General Court decision in Stihl was only persuasive and was not readily reconcilable with the more authoritative CJEU decisions.

• Court of Appeal (Civil Division) dismissed adidas AG’s appeal against the invalidity declarations: [2025] EWCA Civ 1340.
• High Court of Justice, Business and Property Courts, Intellectual Property List (ChD) held six of the registrations invalid for lack of registrability and made the relevant order following judgment by Mrs Justice Joanna Smith: [2024] EWHC 2990 (Ch).