Adidas’ three-stripe position trade marks invalidated

Court of Appeal upheld invalidity of adidas’ three-stripe trade marks as they lacked precision and clarity, and could not be represented in a single sign

What are position trade marks?

Position trade marks relate to the specific placement of a mark on a product, which distinguishes that product from others in the market. Position trade marks often comprise a written description and pictorial representation, which together show what the mark is and where it is placed on the goods. For example, the red sole on Louboutin shoes. By obtaining a position trade mark, a brand owner can prevent competitors from using an identical or similar sign in that specific positioning on identical or similar goods. The significance of position trade marks is that their distinctive character derives at least in part from their positioning on the goods.

Central to this case are adidas’ well-known three-stripe marks. All of the trade marks subject to the appeal featured a graphical presentation of the mark as it appeared on the item of clothing and an accompanying written description which sought to protect “three parallel equally spaced stripes” running along “one third or more” of the side of the goods. It is this descriptive wording and the inconsistencies that this created with the graphical representations filed, that were ultimately fatal to adidas’ marks.

High Court

The Claimants, Thom Browne (“TB”), applied to invalidate 16 of adidas’ trade marks, all featuring three stripes on various articles of clothing, footwear, bags or hats. The trade marks were challenged for lack of: registrability, distinctive character or genuine use.

The High Court found 6 of adidas’ trade marks invalid on the basis that the marks were not sufficiently clear and precise to qualify for registration due to the image and supporting description of the marks filed allowing for an unacceptable level of variation and did not represent a single sign.  However, the court rejected the other challenges. Adidas’ infringement and passing off claims were dismissed for TB’s use of four stripes on goods.

Adidas appealed the finding of invalidity.

Court of Appeal

The Court of Appeal upheld the decision to invalidate adidas’ trade marks. It was determined that, although the existence of multiple variations of the trade mark does not necessarily result in invalidity, in this instance, the ambiguity arising from discrepancies between the filed pictorial representations and the accompanying descriptions, could provide adidas with an undue competitive advantage. Consequently, such variations were deemed impermissible, as the written descriptions suggested that each mark was not meant to be confined solely to its depicted appearance.

By way of example, the pictorial representation illustrated to the right, shows three stripes running along the whole length of the sleeve, from collar to cuff with the description wording specifying that the stripes would run along “one third or more” of the side of the goods. Whilst the wording and representation were clear when considered in isolation, the Court of Appeal found that the effect of the wording when considered in conjunction with the graphical representation, could in practice, lead to a multiplicity of different variations, depending on where the stripes began and ended and how long they were and therefore the trade mark(s) did not represent a single sign.

The Court of Appeal therefore found in agreement with the High Court, that the written description of the mark, when read in conjunction with the pictorial representation, was not clear and precise as the written description extended more broadly than the pictorial representation allowing for too much variation in stripe position and length, affording adidas an unfair competitive advantage.

Comments

This decision highlights the difficulty brand owners have in achieving the balance between seeking wide protection in its trade marks and serves as an important reminder of the criteria for registrability: a trade mark must (i) be a sign, (ii) be capable of graphical representation that clearly and precisely defines the subject matter of protection, and (iii) be able to distinguish the goods or services of one undertaking from another.  

The criteria applies universally to all trade marks. “Non-traditional” marks, like position marks, therefore require more careful consideration of how to best meet the requirements, to mitigate risks of challenges to validity. For position trade marks, a written description (if used) must be consistent with / seek to clarify the pictorial representation. The extent of permissible variation depends on the specific circumstances of each case and the distinct features of the trade mark in question. The Court of Appeal judgment underscores that the objective of trade mark registration is not to confer a monopoly over an abstract concept, but rather to protect particular registrations, the scope of which must be clearly defined and easily understood.

Brand owners are encouraged to seek legal advice to critically evaluate their trade mark portfolio, especially where there is a possibility of multiple variations in the mark, to identify any marks which risk invalidity. 

If you would like to discuss any of the issues raised in this article please contact Emily Roberts, Amy Salter, Holly Webb or another member of the IP team.

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