Thom Browne v adidas
Matter Overview
Secured judgment in favour of fashion designer Thom Browne in High Court trade mark and passing off proceedings against adidas.
The Dispute
Renowned fashion designer Thom Browne launched his eponymous fashion business in New York in around 2000. The designer and his company have recently been involved in a multi-jurisdictional trade mark dispute with the global sportswear brand adidas relating to Thom Browne's use of a four-bar design on various items of clothing. Following disputes in various courts and IP registries around the world, Thom Browne began these proceedings before the High Court of England & Wales, seeking invalidity of a number of adidas' three-stripe registered trade marks, which had been registered as 'position marks' (i.e. as marks intended to be used in particular positions on footwear, clothing, headgear and bags). adidas counterclaimed for trade mark infringement and passing off arising out of the use of the four-bar design on various Thom Browne garments. adidas was unable to point to any confusion arising at the point of sale, and so it argued that there was confusion occurring in a post-sale context.
Judgment – no trade mark infringement, passing off
In its judgment, handed down on 22 November 2024, the High Court (Mrs Justice Joanna Smith) delivered a decisive victory for Thom Browne, dismissing adidas' claims of trade mark infringement and passing off. The judge also found that a number of the adidas position trade marks asserted against Thom Browne failed to satisfy the statutory requirements for registration of a trade mark, making them invalid.
On infringement, the judge's findings confirmed that the average, reasonably observant consumer would generally perceive the difference between three stripes and four. Further, even though both the adidas marks and Thom Browne signs had been used over a period of years (including, in some cases, in the same retail outlets, such as Harrods and Selfridges), and had both been subject to constant media and social media attention, adidas was unable to point to any evidence of actual confusion. Instead, it sought to rely upon a small number of comments on social media, but these were rejected by the court.
The High Court's decision follows triumphs for Thom Browne in both the US and Germany, and was a further significant milestone in this global dispute. As the first decision of the English courts on the registrability of position marks, the case has important implications for the scope of trade mark registrations, as well as some other emerging issues such as post-sale confusion. The court's approach also demonstrates an appreciation of the distinct niches brands can occupy in the fashion sector. adidas has appealed the court's finding that certain of its position marks were not valid, but it has not appealed the non-infringement finding.
The case was recognised as one of the most significant trade mark cases in 2024, and Mishcon won UK Trade Mark Litigation Team of the Year at the Managing IP Awards in April 2025, in recognition of our work on this matter and on other trade mark cases.