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

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

The court held that the majority of the adidas position marks (including key tracksuit top, bottom, vest, and bag marks) are invalid for lack of clarity, precision, and registrability as a sign, as they encompass an impermissible multitude of forms and fail the identification requirements. The remaining marks (notably the shoe, slide, cap marks) are valid but not infringed. There is no likelihood of confusion or actionable link between the Four Bar Design and the adidas marks, either at point of sale or post-sale, and no evidence of actual confusion or damage. Honest concurrent use applies due to over a decade of peaceful co-existence. The passing off claim fails for lack of goodwill in...

Parties
Claimant/part 20 Defendant: Thom Browne Inc; Claimant/part 20 Defendant: Thom Browne UK Limited; Defendant/part 20 Claimant: Adidas AG; Defendant/part 20 Claimant: Adidas International Marketing B.V.; Defendant/part 20 Claimant: Adidas (UK) Limited; Defendant/part 20 Claimant: Adidas International Trading AG
Jurisdiction
England and Wales
Judgment Date
22 November 2024
Procedural Posture
Intellectual Property (trade Mark) Claim and Counterclaim / Final Judgment After Trial
Outcome
Claim for invalidity of most adidas marks allowed; counterclaim for trade mark infringement and passing off dismissed.
Legal Topics
Trade Mark Infringement, Passing Off, Trade Mark Validity, Genuine Use, Distinctive Character, Revocation, Position Marks, Fashion Law
Intellectual Property Commercial Law Trade Mark Infringement Passing Off Trade Mark Validity Genuine Use Distinctive Character Revocation +2 more

Case Brief

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Parties

Thom Browne Inc

Claimant/part 20 Defendant

Thom Browne UK Limited

Claimant/part 20 Defendant

Adidas AG

Defendant/part 20 Claimant

Adidas International Marketing B.V.

Defendant/part 20 Claimant

Adidas (UK) Limited

Defendant/part 20 Claimant

Adidas International Trading AG

Defendant/part 20 Claimant

Procedural Posture

Intellectual Property (trade Mark) Claim and Counterclaim / Final Judgment After Trial

Legal Issues

  1. 1 Whether the adidas trade marks are invalid for lack of clarity, precision, or registrability as a sign
  2. 2 Whether the adidas marks have acquired distinctive character and have been put to genuine use
  3. 3 Whether Thom Browne's Four Bar Design infringes adidas' trade marks under sections 10(2) and 10(3) of the Trade Marks Act 1994

Ratio Decidendi

The court held that the majority of the adidas position marks (including key tracksuit top, bottom, vest, and bag marks) are invalid for lack of clarity, precision, and registrability as a sign, as they encompass an impermissible multitude of forms and fail the identification requirements. The remaining marks (notably the shoe, slide, cap marks) are valid but not infringed. There is no likelihood of confusion or actionable link between the Four Bar Design and the adidas marks, either at point of sale or post-sale, and no evidence of actual confusion or damage. Honest concurrent use applies due to over a decade of peaceful co-existence. The passing off claim fails for lack of goodwill in...

Court Disposition

Claim for invalidity of most adidas marks allowed; counterclaim for trade mark infringement and passing off dismissed.

Orders

  • Declaration of invalidity for Tracksuit Top Marks 808, 588, 095; Tracksuit Bottom Marks 093, 661; Vest Marks 092, 612; Bag Mark 889.
  • Partial revocation of certain marks as per revised specifications.