Mishcon de Reya earns its stripes as client Thom Browne defends adidas challenge

A judgment handed down by the Court of Appeal dismissed adidas’ claim and affirmed a High Court judgment made by Mrs Justice Joanna Smith in November 2024.

In that judgment, the High Court invalidated eight of adidas’ trade marks and dismissed adidas’ counterclaims, holding that Thom Browne was entitled to trade in goods bearing its 4-Bar Sign, as there was no infringement of adidas’ registered marks nor passing off.

Thom Browne had argued that various adidas trade mark registrations for 'position marks' failed to meet the criteria for a valid trade mark as their graphic representations on the register, combined with certain written descriptions, impermissibly claimed protection over a multiplicity of signs. 

As a result, they lacked the requisite clarity and precision to be afforded trade mark protection under Section 1(1) of the Trade Marks Act 1994, and should be declared invalid. The High Court agreed with Thom Browne and this decision has been upheld by the Court of Appeal. 

The appeal to the Court of Appeal, and last year’s High Court proceedings, are part of a multi-national dispute between the parties across courts and intellectual property registries in Europe and the US. The dispute dates back to 2007 when adidas reached out in relation to a three-stripe design that Thom Browne was using on its jackets. Thom Browne subsequently added a fourth stripe to its design. 

Jeremy Hertzog, Partner at Mishcon de Reya and lead partner in this case, commented: "This is the first decision of its kind on 'position marks' in the Court of Appeal and provides helpful guidance on the fundamental requirements for trade mark registrations in this emerging area. 

"The Court has balanced brand protection with ensuring fair competition and drawn a clear line by confirming registrations must be precise and unambiguous. Those seeking to claim protection over multiple different signs provide proprietors with an unfair competitive advantage and cannot be protected. We are delighted for our client."  

Eleanor Wilson, Associate at Mishcon de Reya, added: “By reading the descriptions and looking at the representations together, it was clear to the Court of Appeal that what was claimed by adidas’ trade mark registrations was in fact capable of being understood as multiple different signs rather than variations on one.  

“This case sets an important precedent that even if a brand's trade marks are highly distinctive or famous, this is not enough to save a registration if that mark is imprecise.”