Mrs Justice Joanna Smith has found that various products by fashion designer Thom Browne featuring a four-bar design do not infringe certain position trade marks owned by adidas. She also invalidated eight adidas trade marks for the three-stripes.
Invalidity of three-stripe trade marks
Thom Browne Inc, which was launched around 2000, brought the action to invalidate 16 UK trade marks and adidas counterclaimed for infringement and passing off.
All of the 16 adidas trade marks relate to the three-stripes brand, namely three straight, parallel stripes of equal width and spacing set against a contrasting background. They are registered for clothing, footwear and related accessories: three relate to tracksuit tops, three to tracksuit bottoms, two to vests, four to shoes, two to slides, one to a cap and one to a bag.
The judge considered each of the 16 marks in turn, and found eight of them invalid for lack of clarity and precision.
To take one example, the tracksuit top mark (pictured) was described as consisting of “three equally spaced stripes, all of the same colour, applied to the exterior of the goods covered by the specification, the stripes running down substantially the whole length of the outer lateral surface of the sleeves, legs and/or trunks of the goods, the stripes contrasting with the colour of that part of the goods to which the stripes are applied” (emphasis added).
The judge found:
“This Mark is insufficiently clear, intelligible, precise, specific and accessible to be capable of registration. I do not consider that it would be perceived unambiguously or uniformly by the public and it cannot be objectively ascertained. On the contrary, the Mark appears to me to involve a multiplicity of signs which extend beyond any permissible degree of variation. It is not possible to determine the precise subject of the protection that the Mark affords to its proprietor.”
She particularly objected to the phrases “substantially the whole length” and “sleeves, legs and/or trunks” in the description, saying the scope of the mark is neither objectively ascertainable nor self-contained:
“On this interpretation, it is therefore beyond doubt that there are a number of potential variations in the positioning of the Three Stripes that are intended pursuant to this Mark which are not illustrated and which therefore cannot be identified with any degree of precision or certainty. I consider that the public would be left ‘scratching their heads’ over precisely how the Mark is to appear when used on garments which are described but not illustrated.”
She added that adidas could have chosen to employ more precision, or to apply for different marks showing how the mark appeared on different garments, but did not do so.
On the other validity questions raised in the case, the judge concluded that there was ample evidence that all the adidas marks had acquired distinctive character as at 30 July 2021. She also found that some of the marks (even if they were valid) should be partially revoked due to lack of genuine use.
Infringement
The trade mark infringement claim concerned 24 specimen Thom Browne items. The judge found that, bearing in mind that the average consumer normally perceives the mark as a whole, “my own common sense and experience tells me that the average, reasonably observant, consumer paying a moderate degree of attention will generally perceive the difference between three stripes and four”. Moreover, she said, stripes may be depicted in many different ways and the average consumer can perceive differences between their appearance.
She also disagreed that the “overall effect” of the four-bar design and the three-stripe marks was the same, and she found that the average consumer can make the necessary mental adjustment when stripes are presented in a slightly different position.
Joanna Smith J therefore concluded that the degree of similarity between each of the specimen goods and the asserted marks varied from no similarity at all to “very faint” to “moderate”. Taking account of all the relevant factors, she found no likelihood of confusion between the goods and the marks.
She also found no infringement under section 10(3) Trade Marks Act 1994 as the average consumer would not make a link between the signs and the marks.
Finally, she found that there was no passing off due to lack of goodwill at the relevant date and the absence of misrepresentation or damage.
What does this mean?
Position marks are a relatively new type of trade mark and this judgment suggests that specifications will have be drafted very carefully if they are to have a meaningful scope of protection.
In particular, the description in the specification should be clear and precise and should match the depiction of the mark. Vague terms or those that can have different meanings should be avoided.
Please contact us if you would like to discuss how to draft effective specifications for position marks.
To find out more about the issues raised in this blog contact Rosie Burbidge.