Thom Browne Inc & Anor v adidas International Marketing BV & Ors
| Court | Intellectual Property Enterprise Court |
| Judge | Mrs Justice Joanna |
| Neutral Citation | [2024] EWHC 2990 (Ch) |
| Date | 22 November 2024 |
| Year | 2024 |
| Counsel | Mr Philip Roberts Kc,Mr Edward Cronan,Ms Charlotte May Kc,Mr Maxwell Keay |
Neutral Citation Number: [2024] EWHC 2990 (Ch)
Case No: IL-2021-000046
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (CHD)
Rolls Building
Fetter Lane
London, EC4A 1NL
22/11/2024
Before :
MRS JUSTICE JOANNA SMITH DBE
- - - - - - - - - - - - - - - - - - - - -
Between:
(1) THOM BROWNE INC
(a company incorporated under the laws of the
state of Delaware, USA)
(2) THOM BROWNE UK LIMITED
Claimants/Part
20 Defendants
- and –
(1) ADIDAS AG
(a company incorporated under the laws of
Germany)
(2) ADIDAS INTERNATIONAL MARKETING B.V
(a company incorporated under the laws of the
Netherlands)
(3) ADIDAS (UK) LIMITED
(4) ADIDAS INTERNATIONAL TRADING AG
(a company incorporated under the laws of
Switzerland)
Defendants/Part
20 Claimants
Part 20
Claimants
- - - - - - - - - - - - - - - - - - - - -
- - - - - - - - - - - - - - - - - - - - -
Mr Philip Roberts KC and Mr Edward Cronan (instructed by Mishcon de Reya LLP) for
the Claimants/Part 20 Defendants
Ms Charlotte May KC and Mr Maxwell Keay (instructed by Hogan Lovells International
LLP) for the Defendants/Part 20 Claimants
Hearing dates: 17, 18, 19, 23 and 24 July 2024
- - - - - - - - - - - - - - - - - - - - -
JUDGMENT
APPROVED JUDGMENT – PUBLIC VERSION
Approved Judgment:
MRS JUSTICE JOANNA SMITH
THOM BROWNE v ADIDAS
Mrs Justice Joanna Smith:
1. By this action, the Claimants (together “TB”), part of a global fashion business created
by the designer Thom Browne (“Mr Browne”), seek to invalidate a portfolio of sixteen
trade marks (“the adidas Marks” or “the Marks”) registered in the name of adidas
AG, the First Defendant. The Defendants and two related parties, adidas (UK) Ltd and
adidas International Trading AG, counterclaim for trade mark infringement and passing
off. Nothing turns on the distinction between the different adidas parties who are
collectively referred to as “adidas” (always using a lower-case “a”).
2. Owing to the length and variety of issues addressed in this judgment, it may be of
assistance to say at the outset that it is structured as follows:
The adidas Marks paras 3-9
adidas and its use of Three Stripes paras 10-18
The Thom Browne Four Bar Design paras 19-27
The Dispute paras 28-38
Evidence and Witnesses paras 39-107
The Issues in the TB Claim paras 108-111
Registrability as a Sign paras 112-295
Distinctive Character paras 296-317
Revocation and Genuine Use paras 318-370
The issues in the adidas Counterclaim paras 371-373
Trade Mark Infringement under section 10(2) TMA 1994 paras 374-633
Trade Mark Infringement under section 10(3) TMA 1994 paras 634-679
Honest Concurrent Use paras 680-707
Is an assessment required as at 2020? paras 708-709
Passing Off paras 710-771
Conclusion and Postscript paras 772-775
The adidas Marks
3. adidas is an internationally renowned business trading in, amongst other things, sports
clothing, footwear and related goods under the adidas brand.
4. adidas is the registered proprietor of the following Marks:
(i) No. UK00903517588; (ii) No. UK00002327095; (iii) No. UK00001240808; (iv) No.
UK00903517661; (v) No. UK00002327093; (vi) No. UK00002158168; (vii) No.
UK00903517612; (viii) No. UK00002327092; (ix) No. UK00903517646; (x) No.
UK00002027687; (xi) No. UK00002027689; (xii) No. UK00002327094; (xiii) No.
UK00002349951; (xiv) No. UK00002343327; (xv) No. UK00904269072; and (xvi)
No. UK00906081889.
5. Throughout this judgment I shall refer to individual Marks by their final three digits.
Thus UK00903517588 will be referred to simply as “588”.
6. The adidas Marks all relate to what adidas refers to as “Three Stripes”, an identifier of
the adidas brand which comprises three straight, parallel stripes, of equal width and
spacing set against a contrasting background. They are all position marks which
include a combination of a graphical representation of Three Stripes placed in specific
positions on footwear, clothing, headgear or bags in conjunction with a written
description.
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