Jurisdiction(s):
United Kingdom

EWHC on TMA 1994 s 1(1): clear, precise descriptions required for non‑standard trade marks; Adidas ‘three stripes’ clothing/bag invalid, footwear valid (Thom Browne v Adidas)

Published on: 23 January 2025

Published by a LexisNexis IP expert

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Article summary

Thom Browne Inc and another company v Adidas Ag and other companies [2024] EWHC 2990 (Ch)

What are the practical implications of this case?

Striking the right balance when defining a non‑standard trade mark for registration is difficult. The description has to make the nature of the sign and the extent of the protection conferred by registration plain and unequivocal, while still enabling action against third parties who deploy something comparable. That tension sits between articulating, with certainty, what the mark comprises and how wide its protection runs, and retaining the means to enforce it against similar uses. In this dispute, the language adopted for Adidas’s clothing and bag marks could be read as covering several variants of the sign, embracing multiple forms of the trade mark, and accordingly those entries were found invalid. By contrast, the footwear descriptions were considerably more exact and far less open to interpretation, leaving little scope for ambiguity. As a consequence, the footwear trade marks were confirmed as valid registrations...

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