In brief
- This case is the first to consider the validity of 'position marks', with the court required to consider whether adidas' position marks in question (including the written descriptions that formed part of the registrations) were sufficiently clear and precise. The appeal was on the use and position of adidas' marks, notably for three stripes on various articles of clothing, including tracksuit tops and bottoms.
- The Court of Appeal found all six of the disputed position marks invalid, and the decision provides useful guidance on such marks and how they should be assessed against the criteria for registrability.
Background
On 23 October 2025, the Court of Appeal handed down judgment in Thom Browne -v- adidas.
Thom Browne and adidas have been involved in a series of disputes relating to the use of stripes on clothing since 2007. In recent years, this has included cases before the EUIPO, New York District Court, US Court of Appeals for the Second Circuit, Nuremberg-Fürth Regional Court and the District Court of The Hague, Netherlands.
Thom Browne is the eponymous luxury tailoring and fashion company founded by Thom Browne in 2003. Many of Thom Browne's garments and accessories feature a four-bar design, often asymmetrically and horizontally, around one leg or one sleeve. adidas on the other hand is well-known as "the brand with the three stripes". In this case, the trade marks concerned position marks claimed as three stripes "along" a garment, and depicted vertically as shown in the examples below:
Thom Browne challenged the validity of various of adidas' position marks which incorporated the adidas three stripes as depicted, in various positions on garments, bags and accessories. adidas counterclaimed, alleging trade mark infringement and passing off by Thom Browne.
In November 2024, the High Court judgment dismissed adidas' claims for trade mark infringement and passing off, and also declared eight of adidas' marks to be invalid due to a lack of clarity and precision in the written and graphic descriptions, which is a key registrability requirement under the Trade Marks Act 1994. We reported on the High Court decision here.
This was the first time that a Court of England and Wales had specifically considered registrability of position marks. In the absence of any prior English case law on the topic, the judge, Joanna Smith J, commented that she did not find the issue straightforward and granted adidas permission to appeal on the validity of those marks. adidas ultimately appealed on four grounds, arguing that the judge had wrongly: (i) found that the written description of a mark allowing for unrepresented signs (i.e. signs not shown in the registration) is fatal to (or, at least a factor against) registrability; (ii) overstated the degree of variation encompassed by each mark; (iii) confused the requirement of clarity and precision with a requirement that any variations are depicted in the pictorial depiction of the mark; and (iv) focused on visual differences and did not properly consider the original message's impact.
Court of Appeal Judgment
The appeal concerned six of adidas' position trade marks.
Given the lack of any UK legislative definition for "position marks" (and Arnold LJ rejecting the definition in the EU legislation as "circular"), the parties agreed on the following: position marks consist of a "combination of a visual element […] and its position on the goods", and the significance is that their "distinctive character derives at least in part from their positioning".
Arnold LJ outlined the three conditions for trade mark registrability, primarily drawn from case law of the CJEU (much of which is assimilated law in the UK). To be registrable, a trade mark must be (i) a sign, (ii) capable of being represented graphically in a way which clearly outlines the clear and precise subject matter of the protection under the registration, and (iii) capable of distinguishing the goods or services of one undertaking, from those of another. These three conditions are entirely separate from various other criteria for trade mark registration, including that marks must have distinctive character (inherent or acquired) or must not consist exclusively of signs or indications which have become generic. They are also entirely separate considerations from whether a trade mark has been put to genuine use in the UK.
The pictorial representation and written description of position marks must be considered together. Whereas the representations (shown above) may look relatively clear when viewed in isolation, the written descriptions included language which indicated each mark was not intended to be limited to the way it looks in the picture but would include three stripes "along one third or more" of a garment, sleeve or leg. Arnold LJ held that "a written description which embraces a multiplicity of signs does not comply" with the first and most fundamental condition that a trade mark must be a sign.
Regarding the four grounds of appeal, the Court of Appeal:
- concluded that the High Court judge did not, in fact, state that a mark should be rejected simply because it encompassed variations, but only if those variations were impermissible (emphasis added),
- dismissed adidas' argument that the High Court judge had overstated the degree of variation encompassed by each mark: adidas on its own case asserted that "what is shown in the pictorial representation is merely an example of what is claimed in the written description" (emphasis added),
- held that there was "nothing inconsistent or illogical" in the judge's reasoning at first instance,
- found that the judge did consider the origin message of the trade marks, but that there was no need for the judge to take evidence of use into account for the purpose of determining registrability.
Wider considerations
As the first Court of Appeal judgment to specifically consider "position marks", this case provides important guidance on the registrability of such marks. In particular, the decision highlights that this novel, emerging category of trade marks is no exception to the requirements of clarity and precision which govern "traditional" trade mark registrations.
The Court of Appeal's judgment provides a reminder of the dangers of overreaching in trade mark registrations through using a broadly-worded written description or in seeking protection of a sign admitting numerous possible iterations (as opposed to minor, permissible variations within one single sign – although where exactly this line will be drawn remains to be seen): such registrations are at risk of being declared invalid. The judgment underscores that the purpose of trade mark registration is not to grant a monopoly in (for example) what Arnold LJ referred to during the appeal hearing as "the Platonic essence of three stripes" but to specific registrations, the scope of which must be readily intelligible to the reader.
On the same day, Arnold LJ also handed down a leading judgment of the Court of Appeal in Babek v Iceland [2025] EWCA Civ 1341, which also considered clarity and precision requirements, with a particular focus on graphical representation and description of a figurative mark. In that case, the mark in question fell on the other side of the line and was found to be sufficiently clear and precise to be registrable.
Mishcon de Reya acts for Thom Browne in these proceedings