Thom Browne Inc & Anor v Adidas AG

This is an appeal by the First Defendant (“adidas”) against an order made by Joanna Smith J dated 13 December 2024 in so far as it declared invalid six United Kingdom Registered Trade Marks (“the Trade Marks”) owned by adidas for the reasons given by the judge in her judgment dated 22 November 2024 [2024] EWHC 2990 (Ch). adidas appeals with permission granted by the judge.

In the underlying proceedings the Claimants (“TB”) applied for declarations of invalidity concerning, alternatively revocation of, 16 registered trade marks owned by adidas featuring three stripes on articles of clothing, footwear, bags or hats. The trade marks were attacked on grounds of (i) lack of registrability, (ii) lack of distinctive character and (iii) lack of genuine use. The judge held that the registrability attack succeeded in respect of eight trade marks and failed in respect of the other eight. The distinctive character attack failed against all 16 trade marks, and the non-use attack largely, but not entirely, failed. adidas’ counterclaim against TB for trade mark infringement and passing off was also dismissed.

adidas appeals the judge’s findings that the Trade Marks were invalid for lack of registrability. It does not challenge the judge’s conclusion that two other trade marks were invalid on this ground. Nor does either side challenge any of the judge’s other conclusions.

There have been parallel invalidity proceedings between TB and adidas before the European Union Intellectual Property Office (“EUIPO”) Cancellation Division and Board of Appeal and before the District Court of The Hague in the Netherlands involving what are in substance some of the same trade marks.

The Trade Marks are shown in the table below:

The Trade Marks fall into three pairs. The Trade Marks with numbers commencing 009 are so-called “comparable” UK trade marks which replaced EU (originally Community) trade marks registered with effect from 3 November 2003 as a result of Brexit. I will refer to these as “the Comparable Trade Marks”. The Trade Marks with numbers commencing 00002 are, and have always been, UK trade marks registered with effect from 5 February 2003. I will refer to these as “the Pure UK Trade Marks”.

The Pure UK Trade Marks differ from the Comparable Trade Marks in three respects. First, the written descriptions in the Pure UK Trade Marks include the words “as illustrated below”, whereas the written descriptions in the Comparable Trade Marks do not. Secondly, in some cases, the wording of the specifications of goods differs. Thirdly, the register entries for the Pure UK Trade Marks contain the statement “Trade mark type Three dimensional mark”, whereas the register entries for the Comparable Trade Marks do not. None of these differences is material to the issues on the appeal. The reasons for this will be explained below.

I shall follow the judge’s and the parties’ example of referring to the Trade Marks as Tracksuit Top Marks 588 and 095, Tracksuit Bottom Marks 661 and 093 and Vest Marks 612 and 092 respectively.

It can be seen that all of the Trade Marks comprise both a pictorial representation and a written description. As is common ground, under the applicable legislation, the inclusion of such a written description was optional. Furthermore, if the applicant for registration of a trade mark chose to exercise that option, the wording of the written description was entirely a matter for the applicant. The relationship between the pictorial representations and the written descriptions in the Trade Marks is central to the issues on this appeal.

It may be helpful to explain at this juncture that, as the judge noted at [122(b)], it is common ground that the expression “graphical representation” used in the legislation discussed below embraces both pictorial representations and written descriptions.

It is common ground that the Trade Marks are all “position marks”. There is no applicable legislative definition of a position mark. According to Article 3(3)(d) of Commission Implementing Regulation 2018/626/EU of 5 March 2018 laying down detailed rules for implementing certain provisions of European Parliament and Council Regulation 2017/1001/EU on the European Union trade mark, a position mark is “a trade mark consisting of the specific way in which the mark is placed or affixed on to the goods”. This definition is problematic, for two reasons, First, it is circular because of the use of the words “the mark”. Secondly, even if one replaced the words “the mark” with the words “the sign”, the definition would apply regardless of what the sign consisted of. Counsel for adidas and counsel for TB agreed that a position mark is better understood as referring to the combination of a visual element (which may include its colour) and its position on the goods. A common example of a position mark is the red tab positioned near the top left corner of the right-hand rear pocket of a pair of Levi’s jeans. The significance of position marks is that their distinctive character derives at least in part from their positioning.

It is common ground that, since the Trade Marks were registered in 2003, their registrability is governed by the legislation that was in force at that time. In the case of the Comparable Trade Marks, it is debatable whether that means the relevant provisions of the Trade Marks Act 1994 as they then stood implementing First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (“the Directive”) or the relevant provisions of Council Regulation 40/94/EC of 20 December 1993 on the Community trade mark (“the Regulation”), but it is common ground that it is not necessary to resolve that question because there is no material difference between the relevant provisions.

Article 2 of the Directive provided:

“Signs of which a trade mark may consist

A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.”

Article 2 was implemented in the UK by section 1(1) of the 1994 Act as it then stood (it has subsequently been amended to give effect to Directive 2015/2436/EU which replaced Directive 2008/95/EC which replaced Directive 89/104/EEC). Article 4 of the Regulation corresponded to Article 2 of the Directive.

Article 3(1) of the Directive provided:

“The following shall not be registered or if registered shall be liable to be declared invalid:

(a)

signs which cannot constitute a trade mark;

…”

Article 3(1) was implemented by sections 3(1)(a) and 47(1) of the 1994 Act, which remain unamended. Article 7(1)(a) of the Regulation corresponded to Article 3(1)(a) of the Directive.

The case law of the Court of Justice of the European Union decided prior to 31 December 2020, which is assimilated law, establishes that, in order to comply with Article 2 of the Directive and Article 4 of the Regulation, the subject matter of an application or registration must satisfy three conditions. First, it must be a sign. Secondly, that sign must be capable of being represented graphically. Thirdly, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. See in particular Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2003] ECR I at [23], Case C-49/02 Heidelberger Bauchemie GmbH [2004] ECR I-6129 at [22] and Case C-321/03 Dyson v Registrar of Trade Marks [2007] ECR I-687 at [28]. It is clear that these conditions are independent and cumulative.

In Case C-273/00 Sieckmann [2002] ECR I-11754 the CJEU held at [44]-[45] that the list of examples of signs in Article 2 is not exhaustive, and therefore a trade mark may consist of a sign which is not itself capable of being perceived visually, provided that it can be represented graphically. Accordingly, an odour can be a sign. The same applies to sounds: see Case C-283/01 Shield Mark BV v Josst Kist h.o.d.n. Memex [2003] ECR I-14329 at [35]-[37].

The CJEU has also held that both (i) a single colour which is not spatially defined and (ii) a combination of colours which is not spatially delimited are capable of being a sign: see Libertel and Heidelberger Bauchemie.

In relation to a single colour, the CJEU said in Libertel at [27]:

“… a colour per se cannot be presumed to constitute a sign. Normally a colour is a simple property of things. Yet it may constitute a sign. That depends on the context in which the colour is used. Nonetheless, a colour per se is capable, in relation to a product or service, of constituting a sign.”

In Heidelberger Bauchemie the applicant had applied to register a mark which was represented by a rectangular piece of paper, the upper half of which was blue and the lower half of which was yellow, and which was described as follows:

“The trade mark applied for consists of the applicant’s corporate colours which are used in every conceivable form, in particular on packaging and labels.

The specification of the colours is:

RAL 5015/HKS 47 – blue

RAL 1016/HKS 3 – yellow.”

The CJEU dealt with the first condition as follows:

“23.

As the Court has already held, colours are normally a simple property of things (Libertel, paragraph 27). Even in the particular field of trade, colours and combinations of colours are generally used for their attractive or decorative powers, and do not convey any meaning. However, it is possible that colours or combinations of colours may be capable, when used in relation to a product or a service, of being a sign.

24.

For the purposes of the application of Article 2 of the Directive, it is necessary to establish that in the context in which they are used colours or combinations of colours which it is sought to register in fact represent a sign. The purpose of that requirement is in particular to prevent the abuse of trademark law in order to obtain an unfair competitive advantage.”

It appears from the judgment, in particular [33]-[35] quoted in paragraph 34 below, that the CJEU regarded the fact that the mark consisted of colours “which are used in every conceivable form” as a factor that was primarily relevant to the second condition rather than the first condition. Nevertheless, the Court’s ruling was that:

“Colours or combinations of colours which are the subject of an application for registration as a trade mark, claimed in the abstract, without contours, and in shades which are named in words by reference to a colour sample and specified according to an internationally recognised colour classification system may constitute a trade mark for the purposes of Article 2 of [the Directive] where:

– it has been established that, in the context in which they are used, those colours or combinations of colours in fact represent a sign, and

– the application for registration includes a systematic arrangement associating the colours concerned in a predetermined and uniform way.

…”

In Dyson Dyson had applied to register the following mark:

The CJEU noted in its judgment that:

“19.

As Dyson has stated on a number of occasions both in its written observations and at the hearing, and as the national court itself noted in its order for reference, the application does not seek to obtain registration of a trade mark in one or more particular shapes of transparent collecting bin – the shapes represented graphically on the application form being only examples of such a bin – but rather to obtain registration of a trade mark in the bin itself. It is, moreover, common ground that those marks consist not of a particular colour, but rather in the absence of any particular colour, namely transparency, which enables the consumer to see how much dust has been collected in the collecting bin and to know when the bin is full.

20.

It follows that the trade mark application in the main proceedings covers all the conceivable shapes of a transparent collecting bin forming part of the external surface of a vacuum cleaner.”

The Court held that this did not satisfy the first condition for the following reasons:

“35.

In the present case, it is common ground that the subject-matter of the application in the main proceedings is not a particular type of transparent collecting bin forming part of the external surface of a vacuum cleaner, but rather, in a general and abstract manner, all the conceivable shapes of such a collecting bin.

36.

In that regard, Dyson cannot maintain that the subject-matter of its application in the main proceedings is capable of being perceived visually. What consumers can identify visually is not so much the subject-matter of the application as two of Dyson’s graphic representations as contained in the application. Those representations cannot be assimilated to the subject-matter of the application because, as pointed out by Dyson on a number of occasions, they are merely examples of it.

37.

It follows that, unlike the applications which gave rise to the judgments in Sieckmann and Shield Mark, the subject-matter of the application in the main proceedings is capable of taking on a multitude of different appearances and is thus not specific. … the shape, the dimensions, the presentation and composition of that subject-matter depend both on the vacuum cleaner models developed by Dyson and on technological innovations. Likewise, transparency allows for the use of various colours.

38.

Given the exclusivity inherent in trade mark right, the holder of a trade mark relating to such a non-specific subject-matter would obtain an unfair competitive advantage, contrary to the purpose pursued by Article 2 of the Directive, since it would be entitled to prevent its competitors from marketing vacuum cleaners having any kind of transparent collecting bin on their external surface, irrespective of its shape.

39.

It follows that the subject-matter of the application at issue in the main proceedings is, in actual fact, a mere property of the product concerned and does not therefore constitute a ‘sign’ within the meaning of Article 2 of the Directive (see, to that effect, Libertel, paragraph 27).”

Dyson was an extreme case on the facts, but the underlying principle is not confined to such extreme facts. This is demonstrated by two decisions of this Court concerning the first condition in appeals that were heard together by the same constitution, which gave judgment in both appeals on the same day.

In J. W Spear & Son Ltd v Zynga Inc [2013] EWCA Civ 1175, [2014] FSR 14 Mattel was the proprietor of a trade mark described as follows: “The mark consists of a three-dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range 1 to 10”. The registration included a line drawing depicting a tile. Zynga challenged the validity of the registration. At first instance [2012] EWHC 3345 (Ch), [2013] FSR 28 I held as follows:

“The first condition

47.

In my judgment the Tile Mark does not comply with the first condition for the following reasons. As Zynga rightly contends, the Tile Mark covers an infinite number of permutations of different sizes, positions and combinations of letter and number on a tile. Furthermore, it does not specify the size of the tile. Nor is the colour precisely specified. In short, it covers a multitude of different appearances of tile. It thus amounts to an attempt to claim a perpetual monopoly on all conceivable ivory-coloured tile shapes which bear any letter and number combination on the top surface. In my view that is a mere property of the goods and not a sign. To uphold the registration would allow Mattel to obtain an unfair competitive advantage.

The second condition

48.

Even if the Tile Mark complies with the first condition, in my judgment it does not comply with the second condition since the representation is not clear, precise, intelligible or objective. As discussed above, the representation covers a multitude of different combinations. It does not permit the average consumer to perceive any specific sign. Nor does it enable either the competent authorities or competitors to determine the scope of protection afforded to the proprietor, other than that it is very broad.”

This Court endorsed those conclusions and the reasons given for them.

In Société des Produits Nestlé SA v Cadbury UK Ltd [2013] EWCA Civ 1174, [2014] RPC 7Cadbury had applied to register a mark described as follows: “The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”. The description was accompanied by a colour swatch. The application was opposed byNestlé, which prevailed in this Court for the reasons summarised by Sir John Mummery at [55]:

“In brief, the description of the mark as including not just the colour purple as a sign, but other signs, in which the colour purple predominates over other colours and other matter, means that the mark described is not ‘a sign.’ There is wrapped up in the verbal description of the mark an unknown number of signs. That does not satisfy the requirement of ‘a sign’ within the meaning of Article 2, as interpreted in the rulings of the CJEU, nor does it satisfy the requirement of the graphic representation of ‘a sign’, because the unknown number of signs means that the representation is not of ‘a sign.’ The mark applied for thus lacks the required clarity, precision, self-containment, durability and objectivity to qualify for registration.”

It is clear from these authorities that a written description which embraces a multiplicity of signs does not comply with the first condition. Counsel for adidas submitted that (subject to compliance with the second condition) this does not prevent registration of a single sign whose appearance can vary within permissible limits. That submission entails distinguishing between a description which embraces a multiplicity of signs on the one hand and a description of a single sign whose appearance can vary within permissible limits on the other hand. Counsel for adidas was unable to articulate a bright-line test for making that distinction, but submitted that it was a question of fact and degree depending in particular on the nature of the mark and the way in which it is described. Counsel for TB did not take issue with this given the point mentioned in paragraph 62 below.

In Sieckmann the CJEU explained what was required by the second condition as follows:

“46.

That graphic representation must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified.

47.

Such an interpretation is required to allow for the sound operation of the trade mark registration system.

48.

First, the function of the graphic representability requirement is, in particular, to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor.

49.

Next, the entry of the mark in a public register has the aim of making it accessible to the competent authorities and the public, particularly to economic operators.

50.

On the one hand, the competent authorities must know with clarity and precision the nature of the signs of which a mark consists in order to be able to fulfil their obligations in relation to the prior examination of registration applications and to the publication and maintenance of an appropriate and precise register of trade marks.

51.

On the other hand, economic operators must, with clarity and precision, be able to find out about registrations or applications for registration made by their current or potential competitors and thus to receive relevant information about the rights of third parties.

52.

If the users of that register are to be able to determine the precise nature of a mark on the basis of its registration, its graphic representation in the register must be self-contained, easily accessible and intelligible.

53.

Furthermore, in order to fulfil its role as a registered trade mark a sign must always be perceived unambiguously and in the same way so that the mark is guaranteed as an indication of origin. In the light of the duration of a mark’s registration and the fact that, as the Directive provides, it can be renewed for varying periods, the representation must be durable.

54.

Finally, the object of the representation is specifically to avoid any element of subjectivity in the process of identifying and perceiving the sign. Consequently, the means of graphic representation must be unequivocal and objective.

55.

In the light of the foregoing observations, the answer to the first question must be that Article 2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.”

The Court went on to hold at [69]-[73] that none of the methods of graphical representation of an olfactory sign proposed in that case – a chemical formula, a description in words, the deposit of a sample and a combination of those methods – satisfied these requirements.

In Libertel the CJEU held at [30]-[38] that, in the case of a colour per se, the requirements that the representation be clear, precise, self-contained, easily accessible, intelligible, durable and objective could not be satisfied merely by providing a sample of the colour on a flat surface, but might be satisfied either by including a description of the colour in words or, more readily, by designating the colour using an internationally recognised identification code.

In Shield Mark the CJEU held at [57]-[63] that these requirements were not satisfied by written descriptions such as “the first nine notes of ‘Für Elise’” or “a cockcrow”, nor by an onomatopoeia, but were satisfied by a full musical score written in conventional notation.

In Heidelberger Bauchemie the CJEU held that the mark applied for did not satisfy these requirements for the following reasons:

“33.

Accordingly, a graphic representation consisting of two or more colours, designated in the abstract and without contours, must be systematically arranged by associating the colours concerned in a predetermined and uniform way.

34.

The mere juxtaposition of two or more colours, without shape or contours, or a reference to two or more colours ‘in every conceivable form’, as is the case with the trade mark which is the subject of the main proceedings, does not exhibit the qualities of precision and uniformity required by Article 2 of the Directive, as construed in paragraphs 25 to 32 of this judgment.

35.

Such representations would allow numerous different combinations, which would not permit the consumer to perceive and recall a particular combination, thereby enabling him to repeat with certainty the experience of a purchase, any more than they would allow the competent authorities and economic operators to know the scope of the protection afforded to the proprietor of the trade mark.”

The next two decisions concerned the interpretation of Article 2 of Directive 2008/95/EC and Article 4 of Regulation 207/2009/EC (which replaced Regulation 40/94/EC), but the slight difference in wording between those versions of the legislation and the earlier versions is not material. The first case was not cited in argument, but it is referred to in the next authority, which was cited in argument.

In Case C-578/17 Oy Hartwall ab [EU:C:019:261] Hartwall had applied to register the device shown below accompanied by the description “The colours of the sign are blue (PMS 2748, PMS CYAN) and grey (PMS 877)” as a colour mark, not a figurative mark.

The CJEU held as follows:

“36.

By its second question, the referring court asks, in essence, whether Article 2 of Directive 2008/95 must be interpreted as precluding the registration of a mark, such as that at issue in the main proceedings, submitted, in the application for registration, in the form of a drawing of a colour mark.

37.

In the present case, the referring court states that, according to the application for registration submitted by Hartwall, the sign protection of which is sought is represented by a colour drawing with defined contours, whereas the classification given by Hartwall to the mark registration of which is sought is that of a colour combination without contours.

38.

In that regard, it should be noted that, according to the Court’s settled case-law, a sign may be registered as a mark only if the applicant provides a graphic representation in accordance with the requirement in Article 2 …, to the effect that the subject matter and scope of the protection sought are clearly and precisely determined (see, to that effect, … Libertel, … paragraph 29 and the case-law cited).

39.

The verbal description of the sign serves to clarify the subject matter and scope of the protection sought under trade mark law (see, to that effect, … Shield Mark, … paragraph 59, and, as an example, … Heidelberger Bauchemie, … paragraph 34).

40.

… when the trade mark application contains an inconsistency between the sign, protection in respect of which is sought in the form of a drawing, and the classification given to the mark by the applicant, the consequence of which is that it is impossible to determine exactly the subject matter and scope of the protection sought under trade mark law, the competent authority must refuse registration of the mark on account of the lack of clarity and precision of the trade mark application.

41.

In the present case, the sign protection in respect of which is sought is represented by a figurative drawing, whereas the verbal description relates to a protection concerning two colours alone, that is, blue and grey. Moreover, Hartwall has clarified that it seeks to register the mark at issue as a colour mark.

42.

Those circumstances appear to reveal an inconsistency showing that the application for protection under trade mark law is unclear and imprecise.

43.

Consequently, the answer to the second question is that Article 2 … must be interpreted as precluding, in circumstances such as those in the main proceedings, the registration of a sign as a mark due to an inconsistency in the application for registration, which it is for the referring court to ascertain.”

In Case C-124/18 P Red Bull GmbH v European Union Intellectual Property Office [EU:C:2019:641] the CJEU upheld a decision of the General Court that two registrations by Red Bull of two colours per se, namely blue and silver, did not comply with the second condition. The registrations comprised (i) a pictorial representation consisting of two equally-sized rectangles, one blue and one silver, placed adjacent to each other along a long edge and (ii) a written description which specified the precise shades of blue and silver and stated (in the first case) that “[t]he ratio of the colours is approximately 50%-50%” or (in the second case) “[t]he two colours will be applied in equal proportion and juxtaposed to each other”.

The CJEU held at [37]:

“Where the application is accompanied by a verbal description of the sign, that description must serve to clarify the subject matter and scope of the protection sought under trade mark law and such a description cannot be inconsistent with the graphic representation of a trade mark or give rise to doubts as to the subject matter and scope of that graphic representation (see, to that effect, … Hartwall at paragraphs 39 and 40).”

It is clear from the context that the references in this paragraph to the “graphic representation” are to the pictorial representation.

The CJEU went on to hold at [47]:

“… the General Court did not err in law in concluding, in the judgment under appeal, that the registration of a mark which allows for a plurality of reproductions that are neither determined in advance nor uniform is incompatible with Article 4 of Regulation No 207/2009 and … Heidelberger Bauchemie ….”

There have been three decisions of this Court concerning this condition. The first two are Spear v Zynga and Nestlé v Cadbury, which I have already discussed. In Glaxo Wellcome UK Ltd v Sandoz Ltd [2017] EWCA Civ 335, [2017] FSR 33 Glaxo was the proprietor of a trade mark described as follows: “The trade mark consists of the colour dark purple (Pantone code 2587C) applied to a significant proportion of an inhaler, and the colour light purple (Pantone code 2567C) applied to the remainder of the inhaler.” The registration also included INID code 558 (an international code meaning that the trade mark consists exclusively of two or more colours) and the image shown below.

Sandoz challenged the validity of the registration. HHJ Hacon held that it did not comply with the second condition because anyone looking at the register and trying to understand precisely what the mark consisted of was presented with a puzzle to which there were three possible solutions. The first was a mark with the outline and arrangement of dark and light purple colours shown in the visual representation. The second was a mark consisting of the dark purple colour applied to a significant portion of an inhaler, and the light purple colour applied to the remainder, that is to say in any arrangement of colours meeting the written description. The third was a mark having a pattern of dark and light purple colouring taking the form of any one of a number of abstractions said by Glaxo in proceedings in other jurisdictions and before the EUIPO to constitute the mark. This Court upheld that conclusion.

Kitchin LJ gave a clear explanation of the rationale for the second condition which also applies to the first condition, at [36]:

“The reasons for these requirements are plain to see. A mark must always be perceived unambiguously if it is to fulfil its function as an indication of origin. Moreover, the authorities must refuse to register the sign if, upon opposition by the proprietor of an earlier trade mark, the sign is found to be identical to the earlier mark and if the products or services for which registration is sought are identical with those for which the earlier mark is protected. So also, upon opposition by the proprietor of an earlier trade mark, the authorities must refuse to register the sign where, by virtue of its identity or similarly with an earlier mark and the identity or similarity of the relevant goods or services, there exists a likelihood of confusion. Similarly, the owner of a registered trade mark is entitled to prevent a third party from using a sign which is identical to his mark for goods or services which are identical to those for which the mark is protected. He can also prohibit the use of a sign where, by virtue of its identity or similarity with the mark and the identity or similarity of the relevant goods or services, there exists a likelihood of confusion. As Advocate General Philippe Leger explained in his opinion in Heidelberger at [56], assessment of notions of ‘identity’ and ‘risk of confusion’ necessarily implies a precise knowledge of the sign and mark in question, as they are or as they may be seen by the public concerned.”

As counsel for TB submitted, and I agree, the point made by Kitchin LJ towards the end of this paragraph bears emphasis. The legislation requires a comparison to be made between an earlier trade mark and a later trade mark, or between a trade mark and an allegedly infringing sign, in order to determine whether or not they are identical. It would not be consistent with the scheme of the legislation for the earlier trade mark to comprise multiple candidates for comparison capable of giving rise to different answers to the question “identical or not?”.

It should be appreciated, however, that the comparison must be undertaken at the correct level of abstraction. If the trade mark is a word mark, then the trade mark consists of the word as a word. Any sign consisting of the same word will be identical to the trade mark regardless of font, size or colour. Similarly, if the trade mark is a device registered in monochrome (i.e. without any colour claim or limitation), then the trade mark consists of the device as a device. Any sign consisting of the same device will be identical to the trade mark regardless of size or colour. Another way of looking at this is to regard such questions as concerning the scope of protection of the trade mark, rather than the sign of which it consists.

Returning to Glaxo, Kitchin LJ explained at [77]-[79] that none of the three possible interpretations of the Glaxo registration was free from difficulty. He concluded at [80]:

“Stepping back, I believe that the public, including economic operators, looking at the certificate of the Trade Mark on the register, would be left in a position of complete uncertainty as to what the protected sign actually is. In the words of the Board of Appeal in the Seven Towns case, they would be left scratching their heads. [Counsel for Sandoz] submits and I incline to agree, that the third possible interpretation is the best (or at any rate the least bad) of the three for it provides a way of reconciling the INID code, the pictorial representation and the verbal description. However, this is far from clear. In my judgment, the Trade Mark lacks the clarity, intelligibility, precision, specificity and accessibility that the law demands. Moreover, I have no doubt that it would not be perceived unambiguously and uniformly by the public. It also offends against the principle of fairness because the uncertainty as to what the subject matter of the mark actually is gives Glaxo an unfair competitive advantage. These deficiencies in the Trade Mark are compounded by the range of alternatives that the second and the third possible interpretations encompass. Just as in Heidelberger, each of them allows for numerous different combinations of the dark and light purple colours. Consequently, neither of them exhibits the qualities of precision and uniformity required by Article 4 of the EUTMR.”

Counsel for adidas placed some reliance upon the decision of the General Court in Case T-193/18 Andreas Stihl AG & Co v European Union Intellectual Property Office [EU:T:2021:163]. As she accepted, this is not assimilated law, and it is therefore of merely persuasive authority. Even it were assimilated law, it would be less authoritative than the decisions of the CJEU considered above. In that case Stihl had registered a trade mark in respect of “chain saws” described as follows:“The colour orange is applied to the top of the housing of the chain saw and the colour grey is applied to the bottom of the housing of the chain saw”. In addition, the shades of orange and grey were specified. Giro applied to the EUIPO for a declaration of invalidity. The Cancellation Division rejected the application. The Board of Appeal allowed Giro’s appeal, holding that the mark did not satisfy the second condition. The General Court disagreed and allowed Stihl’s appeal. On any view this is simply a decision involving the application of established principles to the particular facts of that case. I would add that it is not easy to reconcile with decisions such as Hartwall and Red Bull.

It is not necessary to discuss this in detail for the purposes of the present appeal. It is sufficient to note that a sign is only incapable of distinguishing the goods or services of one undertaking from those of other undertakings for the purposes of Article 2 if it is incapable of distinguishing the former from the latter irrespective of the goods or services in relation to which it may be used: see Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau [2004] ECR I-1619 at [80]-[81] and Case C-421/13 Apple Inc v Deutsches Patent- und Markenamt [EU:C:2014:2070] at [20]-[21].

The issue raised by TB’s challenge to the registrability of the Trade Marks was described in the agreed list of issues for trial as follows: “Do the adidas Marks (and each of them) constitute signs represented in the register in a manner which enables the determination of the subject matter of the registration with sufficient clarity and precision?” This issue encompasses two sub-issues. First, is the subject-matter of each registration a sign? Secondly, if so, does the graphical representation of that sign comply with the applicable requirements, and specifically the requirements of clarity and precision? In other words, do the Trade Marks comply with the first condition and with the second condition discussed above?

As counsel for adidas accepted, TB’s statements of case raised both of these sub-issues. As counsel for TB accepted, TB’s submissions to the judge did not distinguish between them. The judge summarised TB’s arguments at [143] as follows:

“TB’s general objections to the adidas Marks set out in written submissions are fivefold, namely that (i) the mark can be represented in an impermissible multitude of forms; (ii) the [written] description of the mark is inconsistent with the graphic representation [i.e. the pictorial representation]; (iii) there is a lack of clarity and precision in the description; (iv) there is a lack of clarity as to colouring and (v) many of the marks are objectionable because they contemplate ‘unrepresented signs’ (i.e. a complaint arising by reference to the Dyson decision).  However, at one point in his closing submissions, Mr Roberts expressed the view that the question of registrability may well ‘collapse down’ to what the degree of variation within the adidas Marks may properly be said to be upon interpretation of those marks and whether such variation is permissible or not.”

Upon analysis, I consider that objections (i) and (v) amount to arguments of non-compliance with the first condition and that objections (ii), (iii) and (iv) amount to arguments of non-compliance with the second condition.

Although in many cases factors which lead to non-compliance with one condition will also lead to non-compliance with the other condition, this is not necessarily the case. The two conditions are independent and cumulative conditions, and it is better to consider them separately.

It is important to note a number of points which were either common ground before the judge or as to which there is no challenge to the judge’s determination.

First, as the judge recorded at [142(e)], it was common ground that the inclusion in the register entries for the Pure UK Trade Marks of the statement “Trade mark type Three dimensional mark” did not affect the issues she had to decide.

Secondly, the judge held, for example at [181], that it was necessary in each case to read the pictorial representation and the written description together.

Thirdly, the judge held at [202], [218] and [240] that the inclusion in the written descriptions of the Pure UK Trade Marks of the words “as illustrated below” did not limit those Marks to what was shown in the respective pictorial representations.

Fourthly, the judge held at [147]-[153] that all of the Trade Marks were properly to be interpreted as limited to (i) stripes of matching colour on a contrasting (i.e. differently coloured) background and (ii) stripes of equal width, equally spaced and of equal length.

Fifthly, the judge held, for example at [179], that, although the pictorial representations only showed the stripes on one sleeve, leg or side, the Trade Marks were properly to be interpreted as meaning that the stripes could be on the other sleeve, leg or side (or on both).

The judge recorded at [123(a)] that it was not ultimately controversial that references to “the public” or “the relevant public” in the CJEU case law concerning Article 2 of the Directive and Article 4 of the Regulation (and their successors) meant something different to the “average consumer” referred to in many other aspects of the CJEU’s case law on trade marks. I am bound to say that I am doubtful whether this is correct (see e.g. Stihl at [34]), but it does not matter for the purposes of the present appeal.

The judge considered the law in some detail at [112]-[139]. Most of her account is uncontroversial, but I must set out two passages.

First, the judge said:

“135.

… the mere fact that a mark includes a number of possible variations or permutations will not inevitably render it invalid.  It may very well do so, but it is clear from the authorities to which I have referred that the issue must be determined having regard to the considerations set forth above and the specific facts of the case.  The degree of precision required in any case (and thus the extent of the permissible variations) will depend on the nature of the mark itself.  It is clear from the authorities to which I have referred that colour marks give rise to very specific and particular issues which may not arise in relation to other types of marks.

136.

Support for this conclusion may be found in Kerly’s Law of Trade Marks and Trade Names (seventeenth edition) which points out at 2-066 that a word mark, which is represented by the word in capitals in plain type, will cover the word in a wide range of typefaces because the representation is clear and precise …. 

137.

However, consistent with my view that everything will turn on the individual mark itself, Kerly goes on to say (also at 2-066) that:

‘[t]here are other marks where the degree of permissible variation is going to be very small indeed, if not practically non-existent.  It may well prove easier to justify permissible variation where the variation occurs in the actual use made of the mark, so that it can be seen and/or proved that the public see the same mark’ (emphasis added). 

I understand this to be a short hand for saying that if the public were to be exposed to all possible permutations of the mark, it would not be confused as to origin - it is in that sense it would ‘see the same mark’.  However, even then, Kerly acknowledges that in many cases (though not invariably) the notion of permissible variation ‘has to be expressed in a series of images or marks’.” 

In so holding, the judge rejected a submission by TB that the test for determining the permissible degree of variation was whether the differences between variations would go unnoticed by the consumer (i.e. the test for identity of marks and of marks and signs established by the CJEU in Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA [2003] ECR I-2799). TB does not challenge that conclusion.

Secondly, the judge said at [139]:

“Finally I should return to the reasoning in Dyson for a slightly different point upon which TB relies.  In that case the graphic representations of the sign were expressly said by Dyson to be ‘merely examples of it’.  Accordingly, while consumers could identify visually those graphic representations they could not be ‘assimilated to the subject matter of the application’ (at [36]).  Instead, the subject matter of the application ‘is in actual fact a mere property of the product concerned and does not therefore constitute a “sign”’ (at [39]).  It is TB’s case that the CJEU made clear in Dyson that it is not acceptable to have a description which allows for what TB describes as ‘additional unrepresented signs’, i.e. signs which are not depicted in the graphic representation because that representation is merely said to be an ‘example’.  TB frames this as an additional answer to the ‘permissible variations’ point.  Specifically, TB says that variations are impermissible if they are not depicted and can only be understood having regard to the wording of the description.  I shall return to this point when considering the adidas Marks in due course.”

The judge applied the law to each of the Trade Marks in the following passages of her judgment: Tracksuit Top Mark 588 at [175]-[198]; Tracksuit Top Mark 095 at [199]-[203]; Tracksuit Bottom Mark 661 at [205]-[214]; Tracksuit Bottom Mark 093 at [215]-[219]; Vest Mark 612 at [227]-[236]; and Vest Mark 092 at [237]-[241].

In her submissions in support of the appeal, counsel for adidas focussed on following paragraphs concerning Tracksuit Top Mark 588:

“181.

Although the description does not refer to the illustration, reading the two together (as I must) suggests that the illustration is intended to show the position of the Mark on an upper garment with sleeves.  Thus it shows the three stripes running the full length of the sleeve (save for the cuff) and also shows that the stripes are located on the outer lateral surface of the sleeve (albeit that this is not specified in the description).  Absent the words ‘running along one third or more’ it would not be difficult to interpret this Mark as being restricted to what is shown in the illustration.  However, that would be to ignore those words, which to my mind convey the intention that the Mark may take different forms, or to put it another way, that the illustration is intended as an example only.

182.

That this is a correct interpretation of the Mark is acknowledged by adidas …

…

191.

Examples of the potential variations encompassed within this Mark owing to the fact that the length of the stripes may differ and their starting and finishing point on the sleeve is not fixed were amply illustrated within … the Cancellation Division’s decision …, as follows: 

192.

For a long sleeved garment, the stripes might start at the collar and run to the elbow, they might start at the cuff and run to the elbow, they might run across the elbow but not reach as far as either the collar or the cuff, they might together be many differing lengths as long as they cover more than one third of the length of the sleeve. Similar variations will apply to a short sleeved garment where the proportions will obviously be very different.  None of these variations is illustrated or contemplated in the pictorial representation and I disagree that they are properly to be regarded as ‘minor’.  Indeed I note in this regard that the Cancellation Division focuses on ‘minor differences in the lengths of the stripes’ whilst apparently not also paying full attention to what I consider to be the significant difference in appearance caused by the fact that the starting and finishing point of the stripes is not fixed. 

193.

Furthermore, once one accepts that the pictorial illustration can only be an example and that the length, the starting point and the finishing point of the three stripes may change, it is difficult to see why the actual position of the stripes running along the sleeve may not also change.  There is nothing in the description to indicate that the stripes are to be on the outer lateral side of the sleeve (as opposed to, say, the underside of the sleeve). 

194.

Accordingly I cannot see that the description of the mark when read in conjunction with the pictorial representation is clear and precise. Although the words in the description ‘one third or more’ are clear in themselves, what this might mean in practice, given the example that has been chosen to illustrate the Mark showing only stripes running the full length of a sleeve from collar to cuff, is very far from clear.  It certainly involves a number of unrepresented signs.  

195.

I accept that the pictorial representation is not in itself inconsistent with the description, in that the stripes shown in the graphic do indeed run along ‘one third or more’ of the length of the sleeve, but once it is appreciated that this is intended only as an example, I cannot see that it assists in providing clarity.  I disagree with adidas that taking the Mark as a whole, the relevant public would perceive a single sign with only a limited degree of variation relating to the length of the stripes, as explained in the text.  In my judgment, on its proper reading, the public would perceive a sign which is intended to cover a wide variety of different forms, none of which (with the exception of the example given in the illustration) is readily ascertainable from the words and illustration used; it would be wholly unclear what the mark consists of.  Applying the formulation used by Kerly to which I have referred above, I do not consider that the public, if exposed to every possible permutation, would ‘see the same mark’.    Furthermore, the confusion created by this state of affairs precludes the potential for consumers to (in the words of the Cancellation Division) recall ‘one particular combination and therefore repeat their purchasing experience’.          

196.

In the circumstances, I consider that this Mark fails to satisfy the identification requirements in the TMA.  It does not correspond to one single, clear precise, objectively ascertainable sign.  The mark will not always be perceived unambiguously or uniformly and it follows that the authorities and the public will be left in a state of confusion as to the nature and scope of the sign. Contrary to the principles that lie behind section 1(1) TMA 1994, this would give adidas an unfair competitive advantage.”

Owing to the way in which the case was argued before her, the judge was not explicit in this passage as to whether she concluded that Tracksuit Top Mark 588 failed to comply with the first condition, the second condition or both. Upon analysis, however, I consider that her findings amount to a conclusion that the Mark failed to comply with either condition: the subject-matter of the registration was not a single sign, nor was it represented clearly and precisely.

adidas appeals on four grounds:

It is common ground between the parties to this appeal that the judge’s conclusions under appeal were evaluative assessments and thus this Court can only intervene if she erred in law or in principle, which includes a gap in logic, a lack of consistency or a failure to take into account a material factor that undermines the cogency of the conclusion. It is not enough that this Court might have reached a different conclusion: see Lifestyle Equities CV v Amazon UK Services Ltd [2024] UKSC 8, [2024] Bus LR 532 at [46]-[50] (Lord Briggs and Lord Kitchin) and Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc [2025] UKSC 25 at [94]-[95] (Lord Briggs and Lord Stephens).

This ground of appeal takes as its starting point the question which the judge left hanging at the end of [139], namely whether TB was correct to submit that “the CJEU made clear in Dyson that it is not acceptable to have a description which allows for what TB describes as ‘additional unrepresented signs’, i.e. signs which are not depicted in the graphic representation because that representation is merely said to be an ‘example’”. adidas contends that it is evident from what the judge went on to say, in particular in the last sentence of [194], that she accepted that submission and that she was wrong in law to do so.

TB accepts that, if the judge had held that the fact that the written descriptions of the Trade Marks embraced variants which were not shown in the pictorial representations was inevitably fatal to registrability, she would have made an error of law. As TB points out, however, the judge said no such thing. As TB submits, her reasoning was to the contrary effect. She expressly held at [135] that the mere fact that a mark included a number of variations would not inevitably render it invalid, and she went on in [137] to indicate that it was not invariably necessary for variations to be shown in a series of images or marks. Furthermore, as noted in paragraph 58 above, she interpreted the Trade Marks as embracing stripes on the other sleeve, leg or side to those shown in the pictorial representations, yet she did not hold that they were invalid on that account. Still further, she held at [247] that a trade mark featuring three stripes on the upper of a laced-up shoe in the area between the laces and sole was valid even though the length of the stripes would vary depending on the style of the shoe.

TB also accepts that it is clear from the judge’s reasoning that she considered it relevant that the written descriptions embraced variations which were not shown in the pictorial representations. TB submits that it is clear from the case law that the judge was correct to regard this as a relevant, but not conclusive, factor with respect to the first condition (and also the second condition) in Article 2 of the Directive. I did not understand counsel for adidas in the end to dispute this, but in any event I agree with TB.

As the judge recognised, it is adidas’ own case that the pictorial representation in each Trade Mark is a non-limiting example of what is encompassed by the written description. As the judge also recognised, the question is whether the extent of the variations embraced by the written description is impermissible. More precisely, so far as the first condition is concerned, does it mean that the subject-matter of the registration is not a single sign whose appearance may vary within permissible limits, but a multiplicity of signs? In asking herself that question, and answering it, the judge did not err in law.

This ground of appeal focuses on what the judge said in [193]. As formulated in oral submissions, it embraces two arguments. First, adidas argues that this is inconsistent with what the judge said at [181]. The short answer to this argument is that there is no inconsistency.

Secondly, and more importantly, adidas contends that the judge was wrong to interpret the written description in Tracksuit Top Mark 588 as embracing stripes on the underside of the sleeve. adidas also contends that, even though the judge did not make the same or a similar comment in relation to any of the other Trade Marks, this error infected her reasoning with respect to all six Trade Marks, because, even though she considered each Trade Mark individually and gave separate reasons in relation to them, she referred back to her reasoning in relation to in Tracksuit Top Mark 588.

Whether or not the judge was right to go so far as to say that the stripes could be on the underside of sleeve or not, it seems to me that the general point she was making was correct. As I have already noted, it is adidas’ own case that what is shown in the pictorial representation is merely an example of what is claimed in the written description. The written description simply says “the stripes running along one third or more of the length of the sleeve of the garment”. As TB submitted, that description not only encompasses variability in the starting points, ending points and length of the stripes, it also encompasses variability in their position upon the sleeve. Even if not on the underside of the sleeve, the stripes could be forward-facing, sideways-facing or rearwards-facing or any gradation between those positions, particularly in cases where the stripes only extend along part of the length of the sleeve.

Even if the judge was wrong to interpret the written description in Tracksuit Top Mark 588 as embracing stripes on the underside of the sleeve, any such error was immaterial. What the judge said in [193] was in the nature of an additional observation. It was not part of her essential reasoning, which was all about variations of the kind shown in the illustrations she reproduced from the Cancellation Division’s decision. [193] could be omitted from her judgment and the reasoning would be unaffected. This is confirmed by the fact that she did not make the same or a similar observation in relation to the other Trade Marks.

adidas argues that the judge’s interpretation of the “one third or more” wording in the written descriptions was inconsistent, illogical and wrong. It points out that she accepted in [194] that those words were “clear in themselves”, but complains that she went on to say that “what this might mean in practice … is very far from clear”.

In my judgment there is nothing inconsistent or illogical or wrong in this reasoning. The fact that the words are clear does not mean that their effect is. As can be seen from cases like Red Bull, Hartwall and Glaxo, words that are clear in themselves may nevertheless set competent authorities, economic operators and the relevant public a puzzle in understanding what the subject-matter of the registration is, particularly when the written description extends more broadly than a pictorial representation which it accompanies. Moreover, as has repeatedly been held in the authorities, and as counsel for TB emphasised, such ambiguity gives the proprietor of such a registration an unfair competitive advantage.

As TB pointed out, not only could adidas have registered a number of trade marks in which the written descriptions corresponded to what was shown in the pictorial representations, but also, in the case of a number of the trade marks considered by the judge, adidas did so, and the judge held them to be validly registered.

adidas contends that the judge wrongly focussed on visual differences between the variations encompassed by the written descriptions and failed to consider whether those visual differences would have any impact on the origin message conveyed by the Trade Marks.

This contention is unfounded. The judge did consider whether the visual differences would have an impact on the origin message conveyed by the Trade Marks, for example in [195]-[196], where she rejected adidas’ case that the relevant public would always “see the same mark”.

In adidas’ skeleton argument, it was also argued that the judge should have taken into account the evidence adduced by adidas to establish acquired distinctive character of the Trade Marks, which included evidence of use of variations falling within the ambit of the written descriptions. In oral argument, counsel for adidas accepted that whether something qualifies as a trade mark within the legislative definition is a logically anterior question to that of whether it has distinctive character for the goods or services in question: see Spear v Zynga at [19], [26], [28] and [33]. Accordingly, she retreated to a submission that the judge should have taken the evidence of use into account by way of a “cross-check” on her conclusions.

I do not accept even that more modest submission. The logical problem remains the same. Furthermore, the evidence of use does not shed any light on how the relevant public would understand the written descriptions. It does not even show either that a large number of variations falling within the scope of the written descriptions have been used by adidas, still less that they are all understood by the relevant public as conveying the same message as to trade origin (there is, for example, no survey evidence before the Court).

adidas relied in support of its appeal upon the decisions of the Cancellation Division and of the District Court of The Hague, which were in its favour. Its reliance upon the decisions of the Cancellation Division was misplaced, not only because the judge considered these with care and explained why she disagreed with them, but also because the Board of Appeal disagreed with the reasoning of the Cancellation Division. In essence, the Board of Appeal interpreted the trade marks as figurative marks limited to the pictorial representations (contrary to adidas’ case, but with the consequence that the registrations were valid). Furthermore, we were told that the decisions were under appeal to the General Court. As for the District Court of The Hague’s decision, while this is a judgment of an experienced court in intellectual property matters and is therefore entitled to respect, it does not demonstrate that the judge made any error of law or principle.

The judge made no error of law or principle in her assessment. She was entitled to conclude, for the reasons she gave, that the Trade Marks did not comply with either the first condition or the second condition in section 1(1) of the 1994 Act, Article 2 of the Directive and Article 4 of the Regulation. I would therefore dismiss the appeal.

I am grateful to Arnold LJ for his clear exposition and analysis of the issues. I agree that the judge was entitled to reach the conclusion that she did, such that the appeal should be dismissed for the reasons given by Arnold LJ.

I would add that the judge was not assisted by the case being argued before her in a way that did not clearly distinguish between the first and second condition in the way exemplified by Spear v Zynga. However, it is nonetheless apparent that the judge concluded that there was no single sign, such that the first condition was not met. Given the examples set out in the Cancellation Division’s decision and reproduced by the judge at [191] of her judgment (see [65] above), this is hardly surprising. Furthermore, the judge was entitled to conclude that the second condition was not met since the Trade Marks were insufficiently clear, precise and objectively ascertainable. As Arnold LJ has said, the distinctive character of position marks derives at least in part from their positioning. If that position is not clearly specified, then the registration requirements may well not be met.

I too would dismiss the appeal for the reasons given by Arnold LJ.