Luxury fashion brand Thom Browne has prevailed at the UK High Court in the latest round of its trademark battle with Adidas.

The court found that of the 16 Adidas trademarks Thom Browne sought to invalidate, eight trademarks were invalid because they failed to satisfy the absolute statutory requirements for clarity and precision.

The court also dismissed Adidas’s counterclaim for infringement and/or passing off.

The court added that “various of the registered trademarks, even if valid, are to be partially revoked”, so as to reflect the revised specifications set out in the judgment.

The marks in dispute involved Adidas’s three stripes running vertically along the length of clothing and shoes and Thom Browne’s “four bar design” composed of “four equally spaced horizontal bars or stripes of equal width which are used asymmetrically in differing positions on his garments”.

Mrs Justice Joanna Smith DBE delivered the judgment at the UK High Court on 22 November, noting that “the average, reasonably observant, consumer paying a moderate degree of attention will generally perceive the difference between three stripes and four”.

She continued that if he or she were to be given six seconds (as Adidas suggests), then “I have no doubt that he or she would have no difficulty whatever in perceiving that difference. Thus I reject the submission from Adidas that the average consumer will not be able to tell the difference between three and four stripes”.

Jeremy Hertzog, partner at Mishcon de Reya and lead partner in this case, commented that the ruling “had important implications for the scope of trademark registrations – in particular, the emerging doctrine known as ‘position marks’ – and appreciation of the distinct niches occupied by brands in the fashion sector”.

Adidas had earlier opposed a number of Thom Browne’s trademarks in the US and Germany; these actions were ultimately unsuccessful but prompted the luxury designer, given the importance of the UK marketplace, to commence proceedings seeking cancellation and revocation of the Adidas marks in the UK.

Commenting on the latest ruling, Thom Browne said: “The judgment in the UK case with Adidas is so significant to me, because I see this as a triumph for designers around the world.”

He added that he was “proud to create a precedent that protects their ability to develop their own signatures and tell their own creative stories in a way that are true to their vision”.

Thom Browne has also commenced proceedings against Adidas in the Netherlands and at the EU Intellectual Property Office (EUIPO).

Earlier in the year, Adidas’s attempts to block EU registration of Thom Browne’s signature multi-striped grosgrain ribbon in the opposition division of the EUIPO was unsuccessful.

However, the High Court judgment noted that the EUIPO’s cancellation division rejected Thom Browne’s application for a declaration of invalidity of some of the marks directly equivalent to marks at issue in this case, agreeing with Adidas’s submissions that the marks in issue met the identification requirements. These decisions are under appeal. 

Rodrigo Bazan, CEO of Thom Browne, said although it had been a “very tough period to defend in various jurisdictions, we are very pleased with this latest judgment in the High Court of London. This output further reinforces the previous judgements in US Federal Court, Germany and Europe”.

He added that: “We are very pleased with our global legal teams that have defended our case with us in all jurisdictions.”

Thom Browne, founded in 2000 in New York, calls itself “an unashamedly expensive and exclusive brand” and is known for its tailoring, particularly its grey shrunken suits. In 2007, following a complaint from Adidas, it moved away from a horizontal three-bar motif to a four-bar motif. 

For its part, Adidas said that it had not previously taken action owing to Thom Browne’s low sales figures in the UK. It added, however, that the “tipping point” came in 2020 when Thom Browne launched its Compression Range in the UK, a range of tops, shorts and leggings made from an elastane fabric blend, which it is accepted can be used for running.

Mischcon de Reya said the judgment would no doubt be welcomed by designers as confirmation that Adidas does not have an absolute legal monopoly on stripes. 

“It also serves as a reminder that even apparently well-established trademarks have limits: if improperly registered or not put to genuine use, any trademark may be vulnerable to invalidation or revocation,” the firm said in a statement. 

The judgment also provided groundbreaking guidance on a range of emerging issues in trademark law, Mishcon added, particularly the scope of protection afforded by position trademarks in the UK, the effect of a crowded market on the distinctiveness of a trademark and the relevance of alleged confusion in the post-sale context. 

Thom Browne was represented by One Essex Court’s Philip Roberts KC and 11 South Square’s Edward Cronan, instructed by a team from Mishcon de Reya, who along with Hertzog included associates Eleanor Wilson and Zoe Albon.

Adidas was represented by 8 New Square’s Charlotte May KC and Maxwell Keay (instructed by Hogan Lovells International).