Court of Appeal depart from EU case law in recent trade mark ruling – Thom Browne Inc v Adidas AG [2025] EWCA Civ 1340
The Court of Appeal’s recent decision in Thom Browne Inc V Adidas AG marks one of the most significant UK trade mark rulings since Brexit. Whilst the judgment ultimately upholds the High Court’s finding that several of Adidas’ three-stripe marks are invalid, its importance reaches far beyond sportwear branding.
The decision also demonstrates a more confident and independent approach by the UK courts, and an inclination to depart from historic EU case law.
What was the dispute?
Adidas owned several UK trade mark registrations – each showing its three parallel stripes on garment sleeves, trouser legs, or the sides of clothing. The registrations included both a picture and a written description stating that the stripes ran along “one third or more” of a garment’s length.
Thom Browne, the fashion house, challenged 16 Adidas registrations on the basis that the written descriptions were too flexible, covering a range of possible stripe positions and lengths. Instead of defining a single identifiable sign, the descriptions effectively embraced many different signs. The High Court agreed with this, ruling several registrations invalid. Adidas appealed and the Court of Appeal had to first consider the statutory provision below.
Trade Marks Act 1994 (“TMA 1994”):
Section 1(1) TMA 1994 defines a trade mark as any sign which is capable of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor. Although the UK has left the EU, the case law interpreting the above provisions such as Dyson Ltd v Registrar of Trade Marks remains part of UK law as “assimilated law”.
Why were Adidas’ position marks invalid?
1. The marks did not represent a single “sign”
The Court held that the product descriptions Adidas applied for were too wide and would result in too many potential forms, including signs that had not been applied for. The wording allowed for (1) stripes in multiple locations (2) different lengths and proportions and (3) combinations not shown in the picture lodged for registration with the Registrar. This meant that the registrations contravened the first condition of the statutory test.
2. The marks lacked clarity and precision
The Court emphasised that Section 1(1) TMA 1994 requires representation “in a manner which enables” competent authorities and the public to determine the subject matter of protection. This wording, introduced in 2019, mirrors the more modern approach set out in the 2015 Trade Marks Directive (EU 2015/2436).
The phrase “one third or more” was a key stumbling block. While linguistically simple, the Court held that its practical effect was unclear. Businesses and consumers would struggle to determine the exact boundaries of what Adidas had exclusive rights over. Uncertainty of this kind conflicts with the purpose of the register and as a result contravenes the second condition of Section 1(1) TMA 1994.
3. Distinctiveness cannot cure an unclear mark
Adidas argued that evidence of acquired distinctiveness should be a “cross check” on the validity of the registrations. The Court rejected this outright. Whether something meets the definition of a trade mark under Section 1(1) TMA 1994 is a logical prior question. Only after a sign is clearly defined can distinctiveness under Section 3(1) TMA 1994 be considered.
Judicial guidance on position marks
The Court clarified the definition of a position mark, an area where the legislation has remained silent.
The Court endorsed the parties’ formulation: a position mark consists of a visual element plus its specific placement on the goods. Distinctiveness can derive from that placement but any ambiguity in placement is likely to cast significant doubt (as it did in this case). The Court emphasised that if the position is not clearly specified, the registration requirements may not be met.
Conclusion
Perhaps the most striking feature of the judgment is the Court’s treatment of EU case law. Historically, the court has treated pre-2021 CJEU decisions as persuasive as they remain assimilated law under the European Union (Withdrawal) Act 2018. In this case however, the Court explicitly departed from CJEU case law. Instead, it relied upon:
- The wording of Section 1(1) TMA 1994
- UK-specific policy considerations
- Practical analysis of how the public would perceive broad and variable descriptions
This marks a subtle but important shift. The Court of Appeal’s decision signals a willingness to depart from CJEU case law and not regard them as persuasive in certain circumstances. For brand owners, this development could lead to increasing divergence between outcomes in the UK and the EU.
Should you wish to discuss the implications of the case or trade marks more generally, please contact Michael Anderson and Nigel Urwin.