A legal battle between Adidas and Thom Browne: The iconic “three stripes design” is not a sufficiently distinctive element? If so, what else is left…
By Antonella Balbo and Sol Baudino.
On January 12th, 2023, the United States District Court for the Southern District of New York issued a ruling by a jury that turns out to be crucially controversial for Fashion Law.
Back in July 2021, Adidas filed a claim against the U.S. designer Thom Browne for using a confusingly similar sign to Adidas’ “three stripes” famous registered trademark among his collections (both footwear and activewear).
But, is there a consumer who does not think of Adidas when they see the three stripes design on clothes? It appears that the members of the jury at the Southern District Court do not agree with this position. There is no doubt that Adidas’ three stripes mark is a well-known trademark. This means that any person thinks of Adidas when seeing this sign, regardless if they are a consumer or not. The status the sign has reached implies a level of acceptance by the public that is a direct consequence of the success of the products that this brand distinguishes. The notoriety enjoyed by a brand indicates a high level of association with a particular product. In this case, with Adidas products.
Thom Browne’s defense argued that his products bore four stripes, while the Adidas sign only contains three, which makes it “sufficiently” different. However, the truth is that for trademark confusion to be possible, the design is not required to be used exactly as registered, which would constitute a fraudulent imitation or a servile copy. There is confusion when a sign that is not identical to the one registered but confusingly similar to it, is used. Only making a minimal change to the designs of already existing trademarks does not mean creating a new trademark. i
Being first is the easiest way to enter and stay in the consumer’s mind. And of course, Adidas was the first to identify its products with an iconic parallel three stripes logo. Therefore, the change in a logo must be substantial to be differentiated from others. For example, if we think of the well-known “Audi” brand sign, what would happen if we simply add one more circle to the four roundels and pretend to use it to identify motorcycles? Eventually, people will start to think that this sign belongs to the “Audi” family of brands, or that the brand is a sponsor of such products.
Nonetheless, the defendant argued that Adidas cannot appropriate all the stripes that exist in the market. Adidas is far from seeking that. Its only objective is to enforce their rights by protecting their trademark within the field in which Adidas markets products. It is clear that Adidas is not the owner of the concept of “stripes” in clothing, but it is the sole and legitimate owner of the sign of three parallel stripes applied on clothes.
Thom Browne argues that the fashion world is filled with stripes designs, therefore, believes that the design used by Adidas should be considered a common design in the industry which has passed into common use. That said, we may go back to the 1940s when Adidas began using its iconic three parallel stripes sign, and registered it in the United States in 1952. Hence, it cannot be understood that the sign is an element that is in general use since, for more than half a century, only Adidas has been using it to identify its products. It is not a recurring sign in other brands, and it unquestionably continues to identify the products of the iconic sports brand for the general public consumer.
Moreover, the German company has always enforced their rights against infringers. In the case in question, since 2004 Adidas has been notifying Thom Brown to stop using a confusingly similar trademark on their designs. It is not a minor fact that in the past, the designer used three stripes on his clothing, but after being served notice, he modified the design to four stripes (2007). Browne’s change to the design is so minimal that, instead of further distinguishing the two brands, it continues to reinforce the prestige built by Adidas. Moreover, Adidas correctly opposed to a trademark application field by Thom Browne in the European Union for a four-stripe mark in 2018. And filed another opposition in the United States with the USPTO in 2020. That said, it is clear that Adidas has been protecting their trademark for at least 20 years. Therefore, it cannot be argued that its trademarks have entered into general use.
The defendant has also stated that public consumer’s confusion between the two designs is unlikely, provided that the targeted markets differ and that him and Adidas offer different products. Thom Browne sells high-end products, while Adidas sells sporting goods. However, it should be pointed out that the products of both parties are not positioned in markets so far apart, as the ruling has considered. It is worth noting that Thom Browne designed the Barcelona FC football players’ uniform, and as a football team is in the sports industry, anyone could wrongfully believe that Adidas had collaborated in the design.
Then we may talk about the power of brand collaborations in the fashion industry. They say that “there is strength in numbers“. When two creative minds or two fashion houses join forces and present a collection together, it is known to increase sales by merging styles and personalities of different designers. Needless to say, Adidas’ numerous collaborations with luxury brands such as “Prada x Adidas“, “Adidas x Gucci” or “Adidas x Balenciaga”, have shaken the fashion industry, becoming icons on the catwalks. Knowing this, the public consumer could easily confuse Thom Browne’s products with those of Adidas, understanding that they are a joint collaboration. And that is how the argument of Thom Browne’s defense has been knocked down.
This case is far from over for Adidas, who disappointed by the verdict, has already publicly stated that will not sit back as they plan to appeal the ruling and fight for the distinctiveness of their brand, as they have done throughout their long history.
We believe that the Adidas parallel “three stripes” is not only a sign with distinctive capacity, but is also a well-known sign, that deserves enhanced trademark protection. Far from having passed into general use, the iconic parallel “three stripes” sign has been the first to reach the market, continues to evoke Adidas products in the minds of consumers, and is in extensive use and under the protection of Adidas.
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