UK Court of Appeal Upholds Invalidation of Adidas' "Three Stripe" Position Marks
The court has reminded brand owners that position trade marks must comprise a single identifiable sign, and cannot be left open-ended by broad written descriptions.
Fashion brand Thom Browne applied for declarations of invalidity concerning 16 "three-stripe" position trade marks owned by Adidas, arguing they did not constitute "signs" under the Trade Marks Act 1994 and its equivalent EU regulation. In November 2024, the High Court found that eight such marks were invalidly registered, and Adidas appealed that finding regarding six of the marks.
The UK Court of Appeal has now upheld the High Court's decision, confirming that all six marks were invalidly registered—and found no error in the High Court's reasoning. The judgment provides practical drafting guidance for brand owners and third parties when applying to register position trade marks (namely marks that are strategically placed on products, particularly items of clothing or footwear). The most important takeaways:
- First, the Court of Appeal expressly separated and reaffirmed the independence of two key conditions to registrability. Trade marks must comprise: (i) a "single sign" capable of graphic representation; which is (ii) objectively identifiable with clarity and precision. These conditions should be analysed distinctly and not collapsed into a single enquiry.
- Second, whilst it is not automatically fatal for a written description of the mark applied for to allow some variation over an example image supplied, the written description must not be open-ended. In the present case, the court found that Adidas' written descriptions of the marks were non-limiting since they allowed for the stripes to start and end at different places on its garments; be of various lengths; be placed on different parts of the garments; and even potentially face in different directions to those stripes shown in the graphical representation on the register. The Court of Appeal agreed with the trial judge that the lack of boundaries in the written descriptions prevented the marks from satisfying either of the conditions at point (1) above. In doing so, it noted that the trade mark system (which is fundamentally based on comparisons between earlier and later marks as to identity, similarity, and the potential for confusion) can only function where the scope of each mark is properly defined.
- Third, a position mark consists of a combination of: (i) a visual element; and (ii) its placement on the relevant item. The Court of Appeal confirmed that the mark's placement on the item will often be integral to the sign itself, since its distinctive character will be derived at least in part from its positioning.
The Court of Appeal's decision reinforces a strict approach to position trade marks in the UK. Drafting that seeks to capture multiple signs under one registration, particularly by pairing a single 'example' image with a broader written description, risks invalidity. Looking ahead, brands seeking to register position trade marks in the UK should ensure any visual examples and written descriptions work together to function as a single, clear, and precise badge of origin.
