Thom Browne Inc & Anor v Adidas AG

Thom Browne challenged a wider set of adidas stripe registrations, but this appeal was only about six UK trade marks for three-stripe position marks on clothing. adidas appealed after the High Court held those six marks invalid for lack of registrability.

The Court of Appeal dismissed the appeal. It held that the judge was entitled to find that these registrations did not identify one single clear sign and were not represented on the register with enough clarity and precision.

Thom Browne Inc and Thom Browne UK Ltd brought proceedings against adidas AG over a portfolio of adidas registrations featuring three stripes on clothing, footwear, bags or hats. The claims were broad at first. Thom Browne sought declarations of invalidity or revocation for 16 registered trade marks.

The attacks covered three main grounds. Thom Browne said some marks lacked registrability, some lacked distinctive character and some had not been genuinely used. adidas responded with a counterclaim for trade mark infringement and passing off.

At trial, the judge reached a mixed result across the wider portfolio. The registrability attack succeeded against eight marks and failed against eight. The distinctive character challenge failed across all 16 marks. The non-use challenge largely failed. adidas’ counterclaim was dismissed.

On appeal, the dispute narrowed sharply. adidas only challenged the findings that six UK registered marks were invalid for lack of registrability. Those six marks fell into three pairs covering tracksuit tops, tracksuit bottoms and upper garments including vest-type items.

Each registration included both a picture and a written description. The descriptions referred to three parallel equally spaced stripes applied to part of a garment, with the stripes running along one third or more of the relevant sleeve, side or leg. That wording became the centre of the appeal.

The court worked from the established trade mark framework for registrability. It said the subject matter of the registration had to satisfy three independent and cumulative conditions. First, it had to be a sign. Secondly, that sign had to be capable of graphical representation. Thirdly, it had to be capable of distinguishing one trader’s goods from another’s.

This appeal focused on the first two conditions. The first question was whether each registration identified a single sign at all, rather than a multiplicity of possible signs. The second question was whether the sign was represented with the required clarity, precision, self-containment, accessibility, intelligibility, durability and objectivity.

The court explained why these requirements matter. The trade mark register must tell the authorities, competitors and the market what is protected. If a registration is too uncertain, it becomes difficult to assess conflicts, infringement risk and the true scope of the monopoly. The court also repeated that uncertainty can give the proprietor an unfair competitive advantage.

Position marks raised a particular issue because their distinctiveness derives at least in part from positioning. In other words, the location of the feature on the product is not incidental. It is part of the claimed sign. If that position is not clearly specified, the registration may fail.

adidas argued that the judge had gone too far in treating unpictured variants as a problem and had wrongly interpreted the wording. Thom Browne argued that the wording and images, read together, did not pin down one single sign with enough certainty.

The Court of Appeal dismissed adidas’ appeal. Arnold LJ held that the trial judge made no error of law or principle and was entitled to conclude that the six registrations failed both the first and second conditions.

On the first condition, the issue was whether the registrations covered a single sign whose appearance could vary within acceptable limits, or instead a multiplicity of signs. The court said that a written description which embraces a multiplicity of signs does not satisfy the requirement of a sign.

On the second condition, the court said the register must define the sign with clarity and precision. The words used in these registrations might be clear in themselves, but their practical effect was not clear when read with the images. That distinction mattered. A phrase can be linguistically clear while still leaving the market uncertain about what the registration actually covers.

The wording saying the stripes ran along one third or more of the sleeve, side or leg was a major problem. The court accepted Thom Browne’s point that this wording allowed variability in starting points, ending points, length and position on the relevant garment area. That meant the image was not simply being explained by the wording. The wording expanded the possible scope well beyond a single pictured sign.

The court also dealt carefully with the point about unpictured variants. It did not say that any variation not shown in the image is automatically fatal. In fact, it accepted that the mere fact a mark includes a number of variations does not inevitably make it invalid, and that it is not always necessary to show variations in a series of images or marks.

But that did not help adidas on these facts. The court held that the judge was entitled to treat the existence of unpictured variants as a relevant factor when deciding whether the written descriptions went too far. The real question was whether the extent of the variation was impermissible. Here, the judge was entitled to find that it was.

adidas also argued that the judge focused too much on visual differences and not enough on whether the marks still conveyed the same origin message. The Court of Appeal rejected that criticism. It said the judge had considered that point and was entitled to reject adidas’ case that the public would always see the same mark.

The court also rejected the idea that evidence of acquired distinctiveness or use could rescue the registrations at this stage. Whether something qualifies as a trade mark within the legal definition comes first. The court treated that as logically anterior to distinctiveness.

This case is useful for businesses because it is not really about famous brands versus smaller brands. It is about the quality of the trade mark filing itself. Even a very well-known branding concept can run into trouble if the register does not define the claimed sign properly.

The clearest lesson is for businesses using non-standard branding. If your brand feature is a stripe arrangement, coloured panel, tab, stitching line or other element whose commercial impact depends on where it appears, the application needs to show that position clearly. Placement is not background detail. It is part of the sign.

The case also shows the risk of trying to keep an application too open-ended. A business may want wording that covers future product tweaks, but if the wording expands the sign beyond what the image actually fixes, the registration may become vulnerable. The register is not meant to reserve a broad concept in the abstract.

That matters in day-to-day brand planning. A product team may think of a feature as one brand idea used in slightly different ways across a range. Trade mark law may not always treat that as one sign. If the differences in placement, length or presentation are material, a single registration may not be the right tool.

The judgment is also a reminder that the public register serves competitors as well as rights owners. A rival should be able to look at the filing and understand what to avoid. If the filing leaves too much room for argument, that can count against validity.

For a business owner, the practical drafting point is simple. The image and the wording in a trade mark application are not separate silos. They are read together. If the wording says more than the image clearly shows, that can create uncertainty about the subject matter and scope of protection.

In this case, the court treated the wording as central because adidas had chosen to include it, and the wording was entirely a matter for the applicant. Once included, it had to help define the sign clearly. It could not be inconsistent with the image or create doubt about what the image meant in legal terms.

That is especially important for product-based branding where the claimed feature sits on a larger item such as a garment or shoe. A small change in where the feature starts, where it ends, how long it runs or which side of the product it appears on may affect whether the filing still points to one sign or many.

When preparing applications of this kind, businesses should think about the filing as if a competitor will later use it as a map. If the map is vague, the registration may be hard to defend.

The Court of Appeal judgment was handed down on 23 October 2025. The appeal was from a High Court order dated 13 December 2024, based on a judgment dated 22 November 2024 in the Intellectual Property List.

The Court of Appeal dismissed the appeal. The High Court’s invalidity findings for the six adidas registrations therefore remained in place.