Adherent
Thom Browne is known to like to get close to adidas’ famous three-stripe with its collection. As such, the company has an interest in shooting holes in adidas’ sturdy wall of protection, which consists of a large number of different stripe brands.
Not clear and not specific
According to Thom Browne, three trademark registrations of adidas are not valid: of a jacket, pants and a shirt on which stripes are applied. Thom Browne believes that the registrations are invalid because they are unclear and not specific enough. Indeed, Adidas added to the registrations the description that “the stripes run along one-third (1/3) or more of the length of the side of the pants/shirt/jacket”. Adidas explicitly mentions this shorter length of stripes in order to stretch the scope of protection of the registrations a bit: the company does not want to commit only to long stripes from top to bottom, but wants to claim some shorter variations as well.
Variations
However, according to Thom Browne the description of the marks is inconsistent with its graphic representation. ‘ The description opens the door to an unknown number of appearances that are not represented in the graphic representation, making it impossible for the public to determine clearly and precisely the subject matter of the registration and the scope of protection sought’, argued Thom Browne.
EUIPO sides with adidas
Yet the cancellation division of EUIPO sides with adidas. EUIPO sees little or no inconsistency between the image of the trademark and the description added by adidas. ‘Those minor differences in the length of the stripes (1/3 or more) will not preclude consumers from recalling one particular combination and therefore repeating their purchasing experience. In other words, the scope for variation in the appearance of the stripes is extremely limited and this level of flexibility in appearance is deemed acceptable. The relevant public … would be able to understand precisely what the mark consists of’, according to EUIPO. The registrations remain valid and Thom Browne can go back into his loft with his tail between his legs.
Will this hold up?
Let me first say that I am very much in favor of this kind of trademark registrations with which you try to create some extra protection with the combination of a picture and explanatory text. I once managed to register the flying KLM swan in all its different positions as a trademark. But times have changed. We now know that the European Court of Justice sets very high standards for the clarity of trademark registrations. When I see the variations shown by Thom Browne, I wouldn’t call these “minor differences in length of stripes,” compared to the picture submitted. I actually just see a completely different trademark. I grant adidas its registrations and protection, but I wonder if they will hold up on appeal.
Bas Kist
