adidas v Thom Browne: Court of Appeal upholds invalidity of three-stripe position marks

Two Court of Appeal judgments were handed down on the same day last week, both covering registrability of trade marks, with the leading judgments in both being given by Lord Justice Arnold. They were in the cases of Thom Browne Inc & Anor v adidas AG [2025] EWCA Civ 1340 and Babek International Ltd v Iceland Foods Ltd [2025] EWCA Civ 1341. This post addresses the Thom Browne v adidas decision, setting out the reasoning in some detail. I will follow up with a post on the BABEK v Iceland decision separately.

This judgment is a must-read for trade mark practitioners, showing as it does some of the pitfalls with filing for position marks, particularly around the descriptions used.

Background and first instance decision

On 13 December 2024, the High Court delivered its judgment ([2024] EWHC 2990 (Ch)) in a claim brought by Thom Browne against adidas seeking to invalidate sixteen of adidas’s ‘three stripe’ trade marks, with adidas counterclaiming for trade mark infringement and passing off in respect of Thom Browne’s use of a’ four bar design’ (i.e. four stripes). Thom Browne was largely successful, invalidating eight of adidas’s position trade marks and seeing off the infringement and passing off counterclaim.

"The mark consists of three parallel equally spaced stripes applied to an upper garment, as illustrated below, the stripes running along one third or more of the sleeve of the garment."

That judgment was lengthy (775 paragraphs), and difficult to summarise. In short however, the marks that were found to be invalidly registered were found to be so as they were not 'a sign' and were insufficiently clear, precise and certain. In particular, the marks contained descriptions, which have been the downfall of many non-traditional trade marks (e.g. here and here), were found to be imprecise and seeking to protect a “multiplicity of signs”.

The appeal

adidas’s appeal was solely in relation to the finding of invalidity of six of the position marks (i.e. it did not appeal the findings on the other two invalidated marks, nor did it appeal the findings on infringement. The leading appeal judgment was delivered by Arnold LJ, with Lady Justice Falk and Lord Justice Peter Jackson agreeing.

Arnold LJ recounted extensively both UK and EU law on the registrability of trade marks, focusing on three distinct and cumulative conditions that he had referred to in previous cases and was based on case law: 

1.     The trade mark must be a ‘sign’;

2.     That sign must be capable of being represented graphically in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner (the Sieckmann criteria); and

3.     That sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings

Arnold LJ went through each of these conditions in detail, referring to significant case law on this topic, such as Dyson ([2007] ECR I-687), Zynga ([2013] EWCA Civ 1175) and Nestlé ([2013] EWCA Civ 1174). The key issue facing the trade marks in those cases was one of public policy; the public reading the register must be able to know what the mark in question is, and where the bounds of its protection lay. Inconsistency between the image of the sign and the written description (which together are the graphical representation) must be fatal to the registrability of the mark.

At first instance, the judge had accepted that in principle there can be possible variations or permutations to the mark without it being necessarily invalid. In support of this, she had pointed to the fact that a mark can be registered as a word only, capturing “a wide range of typefaces because the representation is clear and precise”. She held that provided the average consumer ‘sees the same mark’, those variations are acceptable, and that proposition was not challenged.

The problem for the adidas marks was that while the possibility of a number of variations would not inevitably lead to invalidity, reading the image together with the description did give rise to a multiplicity of signs, predominantly around the length and position of the stripes. Her decision was therefore entirely in keeping with cases such as Glaxo and Nestlé. The judge had been entitled to reach the conclusions that she did, i.e. that the marks did not meet the first or second conditions.

Falk LJ offered a short further judgment that is worthy of mention primarily for its succinct clarity. She held that:

“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.”

Relevance of foreign decisions

adidas relied on EUIPO Cancellation Division and the District Court of The Hague decisions in its favour. Those decisions were only of persuasive authority, and the judge had considered and rejected them, the former on the basis that the marks were interpreted as figurative marks, contrary to adidas's case that they were position marks. Arnold LJ held that the mere fact of inconsistency did not render the judge's decision wrong, showing the different approaches often taken by European and British courts, notwithstanding the fact that trade mark law is the same. 

Conclusion

Marks that are sufficiently variable so as to warrant a description will require a great deal more thought than those that do not. The devil is really in the detail on those marks, and where one needs to specify attributes not shown in the image, clarity is absolutely key. Therein lies the tension between wanting to have wide scope of protection and ensuring validity. 

The differing decisions in the EU and UK do, in this Kat's view, show that UK courts will take their own view of matters and will not necessarily follow decisions of lower EU courts, notwithstanding the similarity of the law being applied.