Case law in the battle of the stripes – Thom Browne vs. Adidas

FashionUnited reported on January 30, 2024 about Adidas’ lawsuit against Thom Browne’s “stripe trademark.” It was another decision in the “Battle of the Stripes” that the Köster law firm had already written about.

There has been a long-standing dispute between Thom Browne and Adidas over the stripes. There have already been trials in the USA, each time with Thom Browne emerging as the winner. And now Thom Browne seems to have the law on his side in Europe too. In this article, Köster Law Firm takes a closer look at the nature of the case at issue and the considerations that led to a decision in favor of Thom Browne.

Objection to trademark registration

The present case between Adidas and Thom Browne before the European Intellectual Property Office (EUIPO) concerned Thom Browne’s trademark registration. First, some background information on this case:

Trademark rights arise through the registration of a trademark in a trademark register. A trademark owner can register the trademark for each country individually, with the Benelux countries being considered “one country” (with one trademark office). A trademark can also be registered throughout Europe or even worldwide (“international”). To maintain trademark rights, the trademark registration must be renewed each time and the trademark must actually be used for the registered goods and services.

Due to trademark law, trademark owners can prohibit others from using “identical or similar” signs in commerce for “identical or similar” goods and services. However, trademark owners can also object to the intended trademark registration if this other person also wants to have the sign registered as a trademark.

In order to register a trademark, it must be officially entered into a register. However, before this happens, an objection can be lodged. The objection period is two months in the Benelux countries and three months in the rest of Europe. During this period, other trademark owners (and in the case of European trademarks also trade name owners) may object to the registration and thus attempt to prevent the registration of the trademark in whole or in part (for certain goods and services).

Adidas vs Thom Browne

This case, which the EUIPO decided on January 26, 2024, concerns Thom Browne’s trademark, which was registered on November 10, 2017 and against which Adidas already filed an objection on February 20, 2018. Adidas based the 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 his logo (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 trademarks had “increased distinctiveness and reputation” and that it had in fact used its trademarks for the specified goods. Not surprisingly, this evidence was all provided by Adidas. The discussion did not focus on the question of whether Adidas used its three-stripe trademarks and whether those trademarks had significant recognition (and reputation), but rather concerned the likelihood of confusion and the unfair exploitation or damage to the reputation of the Adidas trademarks.

Danger of confusion in the objection process

In the event of an opposition to a similar sign and/or similar goods or services, there must be a likelihood of confusion. This occurs when there is a risk that the public might believe that the goods or services come from the same company or possibly from economically linked companies.

When assessing the likelihood of confusion, a) the degree of similarity between the goods and services in question, b) the degree of public attention, c) the degree of similarity between the marks (earlier marks and the mark applied for, the so-called “sign “) and d) the degree of distinctiveness of the earlier marks is taken into account. All of these factors play a role and are communicating forces.

The similarity between the 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 the same by the audience?

EUIPO assessment: no risk of confusion

In Adidas v Thom Browne, the EUIPO decided on these factors as follows:

The EUIPO then weighed all these factors and came to the following final conclusion: despite the level of attention of the relevant public, the identity of the goods and the high distinctiveness of the earlier marks, there was sufficient distance between the earlier marks and the sign and they conveyed one sufficiently different overall impression. It is therefore unlikely, as Adidas claims, that the public will confuse the Adidas and Thom Browne marks or believe that the goods bearing the Thom Browne marks come from Adidas.

Reputation in the objection process

Adidas made 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 that earlier trademark is well-known and the use of the sign “impairs the distinctiveness or reputation of the earlier trademark “unfairly exploited or interfered with”. Invoking this point is reserved for really well-known brands.

EUIPO assessment: no advantage or disadvantage

In connection with the likelihood of confusion, the EUIPO had already found that (i) the earlier marks and the sign had a certain similarity (same basic element) and (ii) the Adidas marks were well known. Adidas therefore meets the requirements for relying on its well-known brands.

But here too, Adidas catches the eye. The EUIPO must also examine whether there is a real risk that the sign will unfairly exploit or damage the distinctive character or reputation of the earlier mark.

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

The differences between the older marks and the sign – the shape and the colors – are much more noticeable and are more likely to be noticed and remembered by the public. This means that the public will be able to easily tell the marks apart (the sign will not immediately trigger the memory of the older marks) and will not easily suspect a connection.

conclusion

Adidas also has to come to terms with Thom Browne’s stylized and colorful brand in the European Union.

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

This article originally appeared on FashionUnited.nl. Translated and edited by Simone Preuss.