Thom Browne vs Adidas: A look into the law behind the battle of the stripes

Earlier in January, the next stage in Adidas’ lawsuit against Thom
Browne unfolded, another decision in the evolving “battle of the stripes”
saga, a story that Dutch law firm Köster had also been following.

There has long been a dispute between Thom Browne and Adidas over the
stripes, with several lawsuits having already taken place in the US, for
which each time Thom Browne is named the winner. And now Thom Browne also
seems to have the law on his side in Europe. In this article, Köster law
firm takes a closer look at the nature of the proceedings in question and
the considerations that led to a decision in favour of the American
designer.

Objection to trademark registration

This case between Adidas and Browne before the European Intellectual
Property Office (EUIPO) concerned the trade mark registration of the
designer. Firstly, some background information on this case:

Trademark rights arise from the registration of a trademark in a
register. A trademark owner can register the trademark for each country
individually, whereby the Benelux countries are considered “one country”
(with one trademark office). A trademark can also be registered Europe-wide
or even worldwide (“international”). In order to maintain the trademark
rights, the registration must be renewed each time and the trademark must
actually be used for the registered goods and services.

Based on trademark law, owners can prohibit others from using “identical
or similar” signs in the course of trade for “identical or similar” goods
and services. However, trademark owners can also – if this other person
also wishes to register the sign as a trademark – object to the intended
trademark registration.

In order to register a trade mark, it must be officially entered in a
register. Before this happens, however, an opposition can be filed. The
opposition period is two months in Benelux countries and three months in
the rest of Europe. During this period, other trademark owners (and in the
case of European trademarks, trade name owners) can object to the
registration and thus try to prevent the registration of the trade mark in
whole or in part (for certain goods and services).

Adidas vs. Thom Browne

This case, which was decided on by the EUIPO on 26 January 2024,
concerns Thom Browne’s trademark, which was applied for on 10 November 2017
and against which Adidas filed an opposition on 20 February 2018. Adidas
based its opposition on several German, European and international
figurative trademark registrations, all of which consist of three stripes.
Adidas wanted to prevent Thom Browne from registering its figurative mark
(three stripes, consisting of a red, a white and a black stripe) in Europe
in classes 18 and 25 (goods made of (artificial) leather, clothing,
headgear and footwear).

The EUIPO first examined Adidas’ claim that its trade marks had
“enhanced distinctiveness and reputation” and that it had actually used its
trademarks for the specified goods. Unsurprisingly, this evidence was all
provided by Adidas. The discussion did not centre on whether Adidas was
using its three-stripes marks and whether those marks had a substantial
reputation (and renown), but concerned the likelihood of confusion and
unfair advantage or detriment to the reputation of Adidas’ marks.

Danger of confusion in the objection process

In the case of an opposition against a similar sign and/or similar goods
or services, there must be a likelihood of confusion. This exists if there
is a risk that the public might believe that the goods or services come
from the same or possibly economically-linked undertaking.

In assessing the likelihood of confusion, account is taken of: a) the
degree of similarity between the goods and services concerned, b) the
degree of attention of the public, c) the degree of similarity between the
trade marks (earlier trademarks and the trademark applied for, the
so-called “sign”) and d) the degree of distinctiveness of the earlier
trademarks. All of these factors play a role and are communicating
forces.

The similarity between the trade marks and the sign refers to the
visual, phonetic and conceptual similarity. So, are the marks visually
similar, do they sound the same when pronounced (in the case of word
marks), and do the marks have a conceptual meaning that is understood in
the same way by the public?

EUIPO judgement: no likelihood of confusion

In Adidas vs Thom Browne, the EUIPO ruled on these factors as follows:

The EUIPO then weighed up all these factors and came to the following
final assessment: despite the degree of attention of the relevant public,
the identity of the goods and the highly distinctive character of the
earlier marks, there was a sufficient distance between the earlier marks
and the sign, and they conveyed a sufficiently different overall
impression. It was therefore unlikely that the public – as Adidas claimed –
would confuse the Adidas and Thom Browne trademarks or believe that the
goods bearing the Thom Browne trademarks originated from Adidas.

Reputation in the opposition proceedings

Adidas raised a further point: without there having to be a likelihood
of confusion, owners of an earlier trademark could prevent the registration
of an identical or similar sign if this earlier trademark was well-known
and the use of the sign “takes unfair advantage of, or is detrimental to,
the distinctive character or the repute of the earlier trade mark”.
Invoking this point is reserved for genuinely well-known trademarks.

EUIPO assessment: no advantage or disadvantage

In connection with the likelihood of confusion, the EUIPO had already
found that (i) the earlier trademarks and the sign had a certain similarity
(same basic element) and (ii) the Adidas trademarks enjoyed a high degree
of recognition. Adidas therefore fulfilled the requirements for relying on
its well-known trademarks.

However, Adidas also stands out here. The EUIPO must also examine
whether there is a real risk that the sign takes unfair advantage of, or is
detrimental to, the distinctive character or the reputation of the earlier
trademark.

And there was no such risk, according to the EUIPO. Despite the
reputation of the Adidas trademarks and the similarity of the goods
concerned, the similarities between the earlier trademarks and the sign
only concern elements that are not particularly distinctive in themselves.
They are quite simple shapes (three stripes). And in general, according to
the EUIPO, the use of stripes for clothing or footwear cannot be given
great weight as it is very common in commercial use.

The differences between the earlier marks and the sign – the design and
the colours – are much more striking and are more likely to be noticed and
remembered by the public. Thus, the public will be able to easily
distinguish the marks (the sign will not immediately evoke the memory of
the earlier marks) and will not easily suspect a link.

Conclusion

Adidas must also accept Thom Browne’s stylised and colourful mark in the
European Union.

Written by Lucia van Leeuwen, intellectual property and litigation
lawyer at Köster Advocaten in Haarlem, the Netherlands. Köster Advocaten
regularly deals with current legal issues here. See kadv.nl.

This article originally appeared on FashionUnited.nl. Translated and
edited by Rachel Douglass.