Adidas vs Thom Browne: Does Adidas own "Three-Stripes" trademark?

The original lawsuit dates back to June 2021, when Adidas claimed that Thom Browne's four-stripe designs are "confusingly similar" to its three-stripe mark and violate the company's trademark. Adidas also claims that it first objected to Thom Browne's use of four parallel stripes on its products in May 2007 and later objected to Thom Browne's use of the grosgrain and four-bar designs in May 2018. Since then, the two parties have been engaged in "good faith" discussions to settle the dispute, but were unable to find a resolution, according to the lawsuit.

Thom Browne is unlikely to be considered a direct competitor of Adidas, as the New York-based fashion designer has continuously operated in the high-end luxury end of the market, while Adidas labels itself as “activewear” brand. However, beginning with the 2018-2019 season, Thom Browne entered into a partnership with the famous European football (soccer) club FC Barcelona. In connection with that partnership, Thom Browne has promoted its goods using images associated with soccer and even several soccer players that are sponsored by Adidas, including most notably Lionel Messi.

Adidas demanded 7.8 million dollars in damages in addition to a share of the sales of the clothes that were in violation of the trademark. Moreover, they wanted the court to prohibit Browne from using the stripes. The jury, however, found the fashion house's parallel stripe designs were not likely to cause consumer confusion with Adidas' products, and, therefore, dismissed the proceedings.

This lawsuit is yet another example of Adidas strictly monitoring and acting on any infringements on its designs and trademarks. The sportswear company has consistently been enforcing its intellectual property rights against other companies, no matter the size of the rival company or the extent of the infringement.

While the widely-known "Three-Stripes" design is undoubtedly closely associated with Adidas, the validity of the claim that this design belongs exclusively to Adidas remains uncertain.

As one of the largest sportswear brands in the world with a net income of €250 million, Adidas pays close attention to the use of its brand assets and continuously expands the scope of its trademark protection. Its most renowned three stripes design, however, has always been one of the more controversial items in its trademark portfolio.

In 2014, Adidas was granted a trademark on “three parallel equidistant stripes of identical width, applied on the product in any direction” on clothing, hats and shoes. However, in 2016, German sporting goods company Shoe Branding Europe applied to the EU intellectual property office for the trademark to be annulled. The General Court of the European Union affirmed that the trademark in question is an “ordinary figurative mark” and lacks distinctiveness in itself. In order to challenge that decision, Adidas was requested to provide evidence that three parallel stripes, regardless of the direction of the product, had acquired a “distinctive character” throughout the EU based on its use so that consumers inherently knew a product was from Adidas and could distinguish it from products of another company. However, the evidence produced by Adidas related to only five Member States and could not be extrapolated to the entire territory of the EU. For that reason, The General Court upheld the annulment decision, dismissing the action brought by Adidas against the EUIPO. Following a declaration that a trademark is invalid, the registration is lost, and the brand no longer has an enforceable trademark.

Dior’s iconic saddle bag is another example of design that, despite its worldwide praise from fashion critics and consumers, is not distinct enough to be registered as a trademark, according to the Union Intellectual Property Office (EUIPO). Christian Dior first filed for registration of the three-dimensional trade mark at the EUIPO on 24 March 2021. However, in its judgment of September 2022 (R 32/2022-2), EUIPO's Second Board of Appeal upheld the decision to refuse registration of the 3D mark relating to the shape of Christian Dior's Saddle bag, which was ruled at first instance by EUIPO because of its lack of distinctiveness. In particular, the EUIPO indicated that in the relevant goods sector, consumers would tend not to rely on the shape of the goods alone in order to identify their origin, but rather on the shape in combination with other elements, such as words and/or accompanying logos, which Dior’s bag does not incorporate. 

In 2018, Lindt filed a lawsuit against Lidl with the Commercial Court of the Canton of Aargau, claiming that chocolate bunny sold by Lidl was very similar in shape and design to their product, which could lead to consumer confusion. That claim, however, was not easy to prove, as Lindt at the time Lindt did not have registered trademark protection in the EU for its golden bunny shape. Lindt & Sprüngli have made the rabbit since 1952 and applied for an EU trademark in 2004. However, the initial judgment of the European Court has ruled that Lindt's chocolate bunny wrapped in gold foil is devoid of any distinctive character. In October 2022,however, the Swiss Federal Supreme Court ruled that Lidl's foil-wrapped chocolate bunny infringed Lindt's trademark rights in its renowned gold chocolate bunny. Lidl was prohibited from selling its chocolate bunny and ordered to destroy the remaining stock.

The key to successful trademark registration is to ensure that the trademark is inherently distinctive. That requires avoiding names or logos that are similar to an existing trademark or are generic in sound or appearance. Business owners should seek professional legal advice in order to ensure that their trademarks are sufficiently distinctive to be registered.