Author: -Nyasha Agnihotri, University of Petroleum & Energy Studies

CASE DETAILS

Adidas America Inc Adidas Ag v. Thom Browne Inc
Neutral Citation Number: [2024] EWHC 2990 (Ch)

BACKGROUND OF THE BRANDS

Adidas’s litigiousness has earned it the label of trademark bully. 1 Adidas, the world’s third most valuable apparel brand,133 is well-known for its “three-stripes” trademark. Adidas met all the requirements needed to register its three-stripes mark in the U.S. by 1994. Since then, Adidas has spent millions of dollars on promoting the three-stripes mark, which continues to signify Adidas products to consumers today. Even though the three-stripes trademark is not distinctive, Adidas has built up its trademark’s strength over the years. As one court described, the three-stripes trademark is arbitrary because “three stripes do not define, describe[,] or suggest the various products that bear them.” However, another court explained that although “the spectrum of distinctiveness does not easily translate into the world of shapes and images . . . the [three-stripe] Mark is strong and entitled to protection.”

Adidas’s first registration for its three-stripes mark.

Images of the Vertical Execution (as depicted in the adidas Marks) on typical examples of adidas sportswear are set out below :

Thom Browne (hereinafter referred as Mr. Browne) started his business Thom Browne Inc (hereinafter referred as TB) in 2003 and it’s first collection was launched in the same year. TB is a high-end fashion designer, with clothing retailing for thousands of dollars. One of the design elements used on approximately a third of the products, including tailoring, is a motif which TB refers to as the “Four Bar Design”. This is effectively composed of four equally spaced horizontal bars or stripes of equal width which are used asymmetrically in differing positions on the garments, including “hooped” around the upper arm of an upper
garment or the upper leg of a lower garment.

Owing to the extensive use of Four Bar Design in its bi- annual collections since 2009, it has become an important brand signifier for the business.

FACTUAL BACKGROUND OF THE CASE

Adidas, a globally recognized sportswear company, initiated a lawsuit against Thom Browne Inc., a fashion house known for its luxury apparel. The central dispute revolved around the use of parallel stripes—specifically, Adidas’ claim that Thom Browne’s “Four-Bar” and similar stripe patterns infringed on Adidas’ trademark rights, which are predominantly
associated with its famous “Three-Stripe Mark.”

According to Adidas, it had been using its three-stripe design in the U.S. since as early as the 1950s, gaining significant recognition and registration across various apparel and footwear categories. Over the years, Adidas had rigorously enforced its rights, pursuing legal action against brands that allegedly attempted to use similar designs. Thom Browne, on the other hand, had initially used a three-stripe design but modified it to a four-stripe version after initial concerns were raised by Adidas more than a decade ago. In the years since, Thom Browne Inc. had extensively used this four-stripe design on apparel such
as jackets, trousers, socks, and other merchandise.

Despite a period of seeming acquiescence, Adidas initiated the current litigation claiming that Thom Browne’s continued use of stripe patterns was confusingly similar and diluted the distinctiveness of the Adidas mark.

CONTENTIONS RAISED BY THE PARTIES

Adidas’ Contentions:
 Adidas alleged that Thom Browne’s use of the four-stripe motif on apparel and footwear was likely to cause consumer confusion due to the similarity with Adidas’ protected three-stripe mark.
 Adidas claimed that its mark was famous and that Thom Browne’s similar use would weaken the distinctiveness of Adidas’ brand identity over time.
 Adidas also raised claims under state law alleging unfair competition and unjust enrichment based on the improper use of its brand value and recognition. Adidas expressed concern that its brand, rooted in athletic performance and mass appeal,
would be improperly associated with a high-fashion label like Thom Browne, thus creating market confusion and harming its reputation.

Thom Browne’s Contentions (via Counterclaims and Defences):
 Thom Browne argued that Adidas waited too long to assert these claims, especially since the fashion brand had been using the four-stripe motif openly for over a decade.
 The defendant claimed Adidas previously expressed no objection to the use of the four- stripe design after the earlier design was changed. This, according to Thom Browne, amounted to tacit approval or at least a waiver of rights.
 The defence also moved to dismiss certain counterclaims and sought to strike down affirmative defences, arguing they were inadequately pleaded or lacked legal basis.
 Browne asserted that its designs were different in market, style, and branding, and that their customer base was distinct from Adidas’s. Thus, no real confusion existed or was likely.

REASONING BY THE COURT

The court, in its preliminary report and recommendation, analysed the motion filed by Adidas to dismiss the counterclaims and strike the affirmative defences. The key observations and legal reasoning are summarized below:

A. On the Motion to Dismiss Counterclaims:
The court treated Thom Browne’s counterclaims largely as mirror images of the defences, particularly those involving laches, waiver, and acquiescence. While Adidas sought dismissal on the ground that Thom Browne had not demonstrated the key elements of these doctrines, the court found that at the pleading stage, the assertions were sufficient.
For instance, Thom Browne provided a narrative that Adidas was aware of its use for over a decade and did not take action, which could support a laches defence. Moreover, the fact that Thom Browne allegedly altered its design after Adidas’ initial protest in 2007 but received no further objection added weight to the argument of implied consent.
Thus, the court recommended denying Adidas’s motion to dismiss these counterclaims, allowing the case to proceed to discovery on these issues.

B. On the Motion to Strike Affirmative Defences:

The court observed that striking defences at an early stage is a drastic remedy and should only be employed where the defence is clearly insufficient or legally irrelevant. In this context, the court determined that Thom Browne’s defences—though perhaps thin—were not so unfounded as to merit being struck.
Affirmative defences like estoppel, waiver, laches, and unclean hands were viewed as legally cognizable. Therefore, the court recommended denying the motion to strike these defences.

C. Distinctiveness and Likelihood of Confusion Analysis (Preliminary)
Although not a final ruling on the merits, the court acknowledged that the crux of the infringement question would lie in whether Thom Browne’s four-stripe pattern was likely to confuse ordinary consumers. The court hinted that both context and product market would be important in resolving the confusion inquiry—considering how consumers perceived the stripes and the brands’ differences in branding strategies.

JUDGMENT

The Court held that Adidas’s motion to dismiss the counterclaims and strike affirmative defences be denied. This allowed Thom Browne to retain its defensive posture and potentially explore these defences during trial. As for the affirmative defenses, the court found that Thom Browne’s first defense of laches, acquiescence, and estoppel was sufficiently pled, while the ninth defense of unjust enrichment was nonsensical and should be partially stricken. The court also struck the twelfth defense of aesthetic functionality, as it mirrored the arguments presented in the counterclaim and failed for the same reasons. Overall, the court determined that Thom Browne’s claims were insufficiently supported and should be dismissed with prejudice. This decision did not resolve the main trademark infringement but also set the stage for proceeding to trial or potential settlement.

Quoting the judgment highlights:

Para 763. “I consider that members of the public are more than capable of distinguishing between the Four Bar Design on the Specimen Items (including shorts and T-shirts) and the Horizontal Executions on adidas shorts and tops with short sleeves. The dimensions of the stripes are different as is their use symmetrically (adidas) and asymmetrically (TB). Importantly the use of four stripes rather than three would, in my judgment, be identified by an ordinary consumer.”

Para 768: “Where I have held that there is no misrepresentation there is no basis on which I could find that any such misrepresentation has enabled TB to make use or take advantage of adidas’ goodwill.”

Para 769: “I observe again that adidas’ failure to take any action (or even to make a complaint) in the years following 2009 is inconsistent with it suffering damage or genuinely believing that TB’s use of its Four Bar Design could potentially cause damage. By 2018, it is to be anticipated that if there was going to be dilution of the adidas Three Stripe brand by reason of TB’s use of the Four Bar Design it would have happened long ago and there would be some evidence of it.”

LEGAL AND ECONOMIC IMPLICATIONS

A. Trademark Protection and Fashion Industry
The case underlines how non-traditional trademarks like stripe patterns can become a point of contention in the fashion industry. Adidas has invested heavily in enforcing the visual aspects of its brand—its three-stripe mark is as much a logo as it is a design feature. The case shows how broad enforcement of such elements can clash with creative design freedom in the
luxury fashion space, especially when motifs like stripes are arguably ubiquitous in clothing.

B. Brand Value and Market Efficiency
Adidas’ concerns were not limited to infringement. It also raised issues related to brand dilution, arguing that similar stripes on high-end fashion goods would erode the exclusivity and recognizability of its mark. Economically, Adidas feared a negative spillover effect—that association with unrelated markets might devalue its core brand appeal. From a competition law standpoint, it can be argued that such broad enforcement could hinder design innovation or become a barrier to market entry if companies fear litigation over aesthetic similarities.

C. Acquiescence and Timing in IP Enforcement
One of the key defences—laches and acquiescence—reinforces the idea that timely enforcement is crucial in IP cases. A failure to act decisively can backfire, as courts may treat such delay as implicit permission or a waiver of rights. In industries where trends evolve quickly, long periods of inaction can severely weaken a company’s legal position. Adidas’ delay of more than a decade gave significant weight to Thom Browne’s defence.

CONCLUSION

The Adidas v. Thom Browne case represents a pivotal moment in fashion-related trademark enforcement. At the heart of the matter is a conflict between a global sportswear giant’s effort to protect its visual identity and a luxury fashion brand’s right to creative expression. While the ruling was procedural, it set the stage for a larger debate about the scope of IP rights, fair competition, and the economic limits of brand protection in a rapidly converging apparel market. As this case progresses or settles, it may also influence how courts handle aesthetic trademarks in future, especially in overlapping fashion and sportswear markets.