Thom Browne Inc & Anor v adidas AC & Ors [2024] EWHC 2990 (Ch) (22 November 2024)

Thom Browne Inc & Anor v adidas AC & Ors [2024] EWHC 2990 (Ch) (22 November 2024)

The court found that the adidas Marks, as registered, are sufficiently clear and precise to be valid and have acquired distinctive character through extensive use. The evidence established genuine use of the Marks in the UK. However, the Four Bar Design used by Thom Browne is sufficiently different from the Three Stripes Marks, particularly in number, orientation, and context, such that there is no likelihood of confusion or misrepresentation. There was no evidence of actual confusion or damage to adidas' goodwill. Accordingly, Thom Browne did not infringe the adidas Marks under sections 10(2) or 10(3) of the Trade Marks Act 1994, nor was there passing off. The claims for invalidity and...

Citation
[2024] EWHC 2990 (Ch)
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.; Part 20 Claimant: adidas (UK) Limited; Part 20 Claimant: adidas International Trading AG
Jurisdiction
England and Wales
Judgment Date
22 November 2024
Procedural Posture
Intellectual Property Trade Mark / High Court Trial Judgment
Outcome
Claim dismissed in respect of invalidity and revocation of the adidas Marks; counterclaim for infringement and passing off dismissed.
Legal Topics
Trade Mark Validity, Trade Mark Infringement, Passing Off, Distinctive Character, Genuine Use, Brand Confusion
Intellectual Property Trade Marks Trade Mark Validity Trade Mark Infringement Passing Off Distinctive Character Genuine Use Brand Confusion

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 6 Authorities cited 6 Party arguments 2 Amounts and remedies 1
Sign in to unlock

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

Part 20 Claimant

adidas International Trading AG

Part 20 Claimant

Procedural Posture

Intellectual Property Trade Mark / High Court Trial Judgment

Legal Issues

  1. 1 Whether the adidas Marks are validly registered with sufficient clarity and precision
  2. 2 Whether the adidas Marks have been put to genuine use
  3. 3 Whether the adidas Marks possess distinctive character

Ratio Decidendi

The court found that the adidas Marks, as registered, are sufficiently clear and precise to be valid and have acquired distinctive character through extensive use. The evidence established genuine use of the Marks in the UK. However, the Four Bar Design used by Thom Browne is sufficiently different from the Three Stripes Marks, particularly in number, orientation, and context, such that there is no likelihood of confusion or misrepresentation. There was no evidence of actual confusion or damage to adidas' goodwill. Accordingly, Thom Browne did not infringe the adidas Marks under sections 10(2) or 10(3) of the Trade Marks Act 1994, nor was there passing off. The claims for invalidity and...

Court Disposition

Claim dismissed in respect of invalidity and revocation of the adidas Marks; counterclaim for infringement and passing off dismissed.

Orders

  • The adidas Marks remain valid and are not revoked.
  • No finding of infringement or passing off by Thom Browne in respect of the Four Bar Design.