Stripes in Dispute: Trademark Stories from Adidas’ Legal Battles

For the first time, Adidas made its trademark application in the year 1949. The logo that the brand had applied for the very first time was a “spiked shoe with three stripes, positioned between elongated extensions on the two “d’s” in “Adidas. The business is expanding, and its portfolio of trademarks is on the up and up; now, it boasts an enormous number of trademarks across the world, estimated at 6,000. Adidas’s aggressive approach to protecting its IPR has made it a force to be reckoned with as a top competitor in the trademark arena.  A look back in the realm of IP litigation of Adidas showcases that it has prosecuted multiple big players like NIKE, TESLA, MARC JACOBS, SKECHERS, THOM BROWNE, etc.[i]

Generally, when a sports enthusiast or a shopaholic goes shopping, they can, just by looking at a product having 3 stripes, associate the product to be of Adidas. It is because Adidas has been selling its products (sports shoes, and textiles) by using the three-stripe label for decades now. There is hardly anyone who does not recognize this association. These three stripes are lateral stripes, stand parallel to each other, and are equidistant from each other.[ii]

Typically, the three parallel stripes are placed lengthwise along the side seams of sportswear garments. Usually, the stripes’ color and the material underneath have a contrasting color. The applicant is the legitimate owner of the figurative mark, which has been registered with the Trademark offices present in different jurisdictions. It is surprising to see that the three-stripe design/mark, which is symbolic of Adidas and which the common people associate with Adidas, has been said to be lacking the required acquired distinctiveness. The blog will explore the recent litigation of Adidas with Nike, which happened in Germany, and also with Thom Browne, which took place in New York federal court.

ADIDAS VS. NIKE, HIGHER REGIONAL COURT OF DÜSSELDORF

5 variations of the jogging pants that were sold by Nike were the bone of contention in this matter. While the lower courts initially granted an injunction in favor of Adidas for all 5 variations, the Higher Regional Courts, on appeal, partially allowed the respondents (Nike) to continue with other variations but especially restrained the Purple Blue Jogger, which had three-stripes which resembled exactly with the Joggers/sportswear sold by Adidas.

It was laid down that in order to contest a mark identical to their own trademark, the owner would have to showcase that one of the following functions has been impaired, namely, “guaranteeing the origin of goods/services, ensuring quality and supporting communication, investment, or advertising purposes.” Use that is purely descriptive would not infringe upon the rights of the trademark owner. Public perception is yet another factor. The use of a trademark is dependent on “how the public perceives that sign” and not on the intent of the user. Signs like stripes on clothing, whether they should be perceived as trademarks or just an element of decoration, depend on the placement, content, and type of design. Often, such stripes’ designs (which are seen on the side edges of trousers) are mostly taken as an element of decoration. Unless and until some distinctiveness or specific design feature is proven, the public will not usually see that pattern as a trademark. As soon as there is some variation in the designs of the stripes, association with a particular brand is diluted. It was, therefore, for Adidas to prove that their trademark of stripes serves more than just decorative usage and is inherent to their brand. It was necessary for Adidas to establish a strong defense of “consumer confusion”. That one three-stripe mark that got injuncted was identical to the Appellant’s with few differences in colors and minor designs. The appellant’s trademark had increased distinctive character because of extensive use by popular sportsmen, and, therefore, risk of confusion existed. Ergo, it was a partial victory for Adidas.[iii]

THOM BROWNE INC V ADIDAS AG [2024] EWHC 2990 (CH), BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES, INTELLECTUAL PROPERTY LIST

Four stripes became an integral part of socks, bordering it and a part of blazer sleeves for Thomas Browne. Thom Browne was seen entering the court in shorts with socks that had four stripes on them. Lawyers from Browne said that Adidas is a sports label that is accessible to everyone worldwide, while Browne is the head of a luxury fashion house where the runway has celebrities as his clients. The difference between the prices is rather substantial. For example, a Thom Browne cardigan is sold at £1,300, having four stripes, but an Adidas three-striped track jacket can be sold at as modest a price of £36 only. The defense lawyers of the designer maintained in court that stripes are too common design characteristics of so many brands; the lawyer of the designer said, “Adidas can’t have all rights on the stripes alone.

The court ultimately held Adidas’ trademarks to be valid and distinctive but concluded that they were not broad enough to cover all designs featuring stripes. The court emphasized the need for “clarity and precision in trademark registrations” to avoid unjust monopolization. Browne’s signature four stripes have been featured on the borders of socks and the sleeves of blazers.

Since no evidence arose indicating consumer confusion over the Adidas and Thom Browne products, the court ruled that the “Four Bar Design” was not in conflict with the Adidas trademarks nor confusing consumers. A good balance in terms of innovation and coexistence enables brands to flourish without overextending themselves.[iv]

The efficiency of trademark law and the protection of the Registered Trademark have been critically analyzed in the “Adidas v. Nike” and “Adidas v. Thom Browne Inc.” disputes. Both of these disputes focus on the analysis of Adidas’ three parallel stripes and whether the consumers will confuse it with something else, but they differ in outcome because of the contextual differences. In the case of “Adidas v. Nike”, the commonality within the market audience and the similarity of the “Purple Blue Jogger” to the “Blue Stripes Jogger” led to a ruling which came into effect for only part of the trademark, one that enabled him to sue the owner of the TB trademark for using similar designs. On the other hand – “Adidas v. Thom Browne” Case, the sole four-stripe trademark design by OTT which combined with different pricing strategies and demographic targets, made it possible to ignore consumer confusion for the different target audiences, so the ruling was pro-innovation and pro-coexistence. The conclusions focus on the significance of the public’s view, distinctiveness, and the market context in the determination of the scope of trademark rights protection.

Author: Anavi Jain, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney

[i] Alicja Wroczynska, Stripes in the Spotlight: Adidas’ Latest Trade Mark Clash, Trademark Lawyer Magazine (Dec. 2, 2023), https://trademarklawyermagazine.com/stripes-in-the-spotlight-adidas-latest-trade-mark-clash/#:~:text=Adidas’%20first%20trademark%20application%20dates,d’s%E2%80%9D%20in%20%E2%80%9CAdidas%E2%80%9D.

[ii] Ilse du Plessis and Professor Wim Alberts, Adidas stripes: the width of protection, Lexology (Feb 8, 2012), https://www.lexology.com/library/detail.aspx?g=73b5074b-970c-46f2-9301-57ca6699f7f0#:~:text=The%20dominant%20features%20of%20the,either%20two%20or%20four%20stripes.

[iii] Adidas v Nike, 20 U 120/23

[iv] [2024] EWHC 2990 (Ch).