Thom Browne v Adidas: how can brands protect position marks?

The Court of Appeal delivered a significant judgment in the dispute between Thom Browne and Adidas over the validity of Adidas’ three-stripe trade marks on clothing. At first instance in the High Court, eight of sixteen challenged Adidas position trade marks were invalidated. Adidas had counterclaimed for trade mark infringement and passing-off on the basis of Thom Browne’s ‘four bar’ design; that claim was dismissed and Adidas did not seek to appeal it.

Adidas appealed the lower court’s invalidation of six of its three-stripe marks, but its appeal was dismissed. The Court of Appeal’s judgment, delivered by Lord Justice Arnold, sets out clear guidelines for brands seeking to protect position marks, in particular, and also for trade mark applicants more broadly.

Key lessons from the judgment

1. A ‘sign’ must be a single, specific thing

1. • A trade mark must be a single, clearly identifiable “sign”. It cannot be a collection or a family of different possible signs.
   • If a trade mark description allows for numerous variations, such as stripes of different lengths, starting and ending at different places, or on different parts of a garment, it is not a single sign but a multitude of signs.
2. Clarity and precision are essential
   • The “sign” must be defined precisely enough that anyone (including the public, competitors, and authorities) can understand exactly what is protected.
   • Both the written description and any illustration must work together to show the same, specific sign. Any ambiguity may render the registration invalid.
3. Position marks require particular care
   • For trade marks based on the position of a feature on a product (like stripes on a sleeve), the exact position and appearance must be specified. The distinctive character of a position mark often depends on its precise placement.
4. No monopoly on broad concepts
   • The Court of Appeal warns against seeking to claim exclusivity over a broad concept – for example, “three stripes anywhere on a garment”. Trade mark law is not intended to give one business a monopoly on a general idea or aesthetic.

Why did Adidas’ appeal fail?

The Court of Appeal confirmed that the descriptions of the Adidas marks were too broad, allowing for many variations not shown in the filed illustrations. It also found that this meant the marks were neither a single sign nor sufficiently clear and precise.

Takeaways for brands when considering position marks

• Define your ‘sign’ clearly: be specific and show (and if described, state) exactly what you want to protect.
• Avoid vague or open-ended descriptions: non-exhaustive ‘examples’ are to be avoided. As in this case, “one third or more of a sleeve” is overly broad and could cover a multiplicity of lengths and positionings. Describe what is actually depicted and which you seek to protect.
• Check for consistency: ensure that any written description aligns with the corresponding illustration.
• Don’t overreach: trying to claim too much will put your mark at risk of being invalid.

The Court of Appeal judgment provides helpful clarification on what qualifies as a trade mark “sign” in the UK: it must be a single, specific, and clearly defined sign, not a vague or open-ended concept. In her concurring reasons, Falk LJ succinctly captured the core lesson for brands: “As Arnold LJ has said, the distinctive character of position marks derives at least in part from their positioning. If that position is not clearly specified, then the registration requirements may well not be met.”

If you would like to discuss how this judgment could affect you, or want advice to ensure your trade mark applications are clear and precise enough for UK law, please contact James Tumbridge, Robert Peake, and Anne-Marie Harding.