Charlotte May KC and Maxwell Keay appeared before the High Court for the Defendants (“adidas”) in the Claimants’ (“Thom Browne”) action seeking to invalidate a portfolio of sixteen of adidas’ registered trade marks, all of which related to “Three Stripes” as position marks. adidas counterclaimed for trade mark infringement under sections 10(2) and 10(3) of the Trade Marks Act 1994, as well as passing off, alleging that Thom Browne’s Four Stripe Design had a high level of similarity with its Three Stripes trade marks.
Mrs Justice Joanna Smith DBE held eight of adidas’ trade marks to be valid but that the other eight were invalid for lack of registrability. However, she dismissed adidas’ claims of trade mark infringement and passing off. The Judge found that there was no likelihood of confusion among UK consumers, and no unfair advantage of or detriment to the distinctive character or reputation of adidas’ marks due to Thom Browne’s use of the Four Bar Design.
This judgment is the first decision of the English courts on the registrability of position marks, which include a combination of a pictorial illustration in conjunction with a written description.