A significant chapter in the dispute between Adidas and fashion brand Thom Browne has now closed, with the Court of Appeal confirming that several of Adidas’s position trade marks for its famous three-stripe design are invalid.

This is a notable decision for rights holders, marking the first time the Court of Appeal has considered the requirements for position marks: trademarks defined not just by how they look, but by where they appear on a product.

Background: The High Court’s 2023 Decision

In 2023, the High Court ruled that eight out of sixteen of Adidas’s registered position marks could not stand. Although the registrations featured the well-known three-stripe motif, the court found that the way they were depicted and described in the trade mark register was too imprecise.

The images and wording covered a range of potential stripe configurations rather than one single, clearly identifiable sign. Because of this lack of clarity and precision, the registrations failed to meet the fundamental requirements of a trade mark.

The High Court also concluded that Thom Browne’s four-stripe embellishment did not infringe the remaining valid marks, emphasising that Adidas could not legitimately monopolise every stripe-based decoration on clothing.

The Appeal: Six Position Marks Under Review

Adidas appealed the invalidation of six marks. These related to three-stripe arrangements placed on:

· the sleeves of tracksuit tops,

· the legs of trousers, and

· the sides of vests

Each registration included wording such as: “Three parallel equidistant stripes applied to an upper garment … extending along one third or more of the length of the sleeve.”

This type of phrasing became central to the Court of Appeal’s assessment.

The Court of Appeal’s Outcome: Appeal Dismissed

The Court of Appeal upheld the High Court’s approach and rejected Adidas’s appeal in full, confirming that all six marks were invalid.

The Legal Test

To function as a trade mark, a sign must:

1. Constitute a single, identifiable sign;

2. Be represented in a clear and precise manner; and

3. Enable consumers to distinguish the goods of one trader from those of another.

The judges agreed that Adidas’s marks fell short on the first two criteria.

The Court identified several problems:

· The phrase “one third or more” created an open-ended scope, allowing for many potential variations in how the stripes could appear.

· Because the description permitted multiple possibilities, it did not match cleanly with the images and failed to fix the sign with the required certainty.

· Granting protection on such broad terms would unfairly extend the rights conferred by a trade mark, contrary to established principles.

In essence, the registrations did not pin down a single, precise sign capable of legal protection.

Implications for Trade Mark Owners

The decision offers important guidance for anyone seeking protection for non-traditional marks, including position, pattern, colour, or shape marks.

· Position marks can be registered, but the depiction and wording must work together to present one clear sign.

· Vague or flexible qualifiers, such as “one third or more” or “substantially the whole”, risk invalidity.

· Even highly recognisable brand elements are not guaranteed protection when used in less conventional formats.

Berry Smith’s View

This judgment highlights the critical importance of precision when drafting and registering position trademarks. The courts will not uphold marks that leave room for interpretation or encompass multiple possible versions of a sign.

At Berry Smith, our specialist Commercial & IP team advises on all aspects of trademark registration. We can support you with trademark searches to check availability and eligibility and filing trademark applications.

For expert guidance, you can reach our commercial lawyers at 02920 345511 or commercial@berrysmith.com.