Adidas V. Thom Browne

Abstract

The case discussed herein is related to intellectual property rights and the infringement of the same. Adidas sued Thom Browne for using the renowned "three-stripe" logo design without prior permission, but the defendant company ultimately prevailed in the case. Due to the similarity between the two logos, Adidas initiated legal proceedings against Thom Browne for trademark infringement. What prevailed was one of the most interesting legal battles between two companies with a similar vision.

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Adidas began the use of its "three-quadrilateral" pattern on footwear in 1952 and has since defended its trademark rights to it. Adidas has 24 trademark registrations for stripes in various forms, which also cover a range of clothing. The "Three-Bar Signature" was introduced by the Browne brand in 2005 and the company agreed to stop using the pattern when Adidas asked them to do so. Thereafter the Browne Company introduced a "Four-Bar Signature" which they started using from 2008 and 2009. However, Adidas claimed that Thom Browne's decision to use stripes on sportswear was likely to cause confusion among customers and would mislead the general public.

In a stateside opposition submitted in December 2020, Adidas urged that the "Trademark Trial and Appeal Board" of the United States Patent and Trademark Office repudiate the three pending trademark applications for white, red, and blue stripe trademarks for use on footwear submitted by Thom Browne earlier that year. In 2021, Adidas sued Thom Browne's business, alleging that the New York designer's four-bar and "Grosgrain" stripe designs on the company's primary sportswear and shoes infringed on its three-stripe trademark rights. Adidas filed a lawsuit against Thom Browne in June 2021, accusing trademark infringement and dilution, which started the current trademark dispute.

Adidas filed two claims in the current action against the defendant Thom Browne: a trademark infringement claim and a trademark dilution claim. The case was decided based on several grounds, the first of which was the mark's strength. The jury evaluated whether the Adidas mark is strong enough to cause consumers to associate its products with a particular brand. The jury determined that the "Identifiability aspect" of the Adidas mark helped people relate to it more, so using a similar mark by another party will undoubtedly cause confusion among consumers. To determine whether resemblance or lack of similarity between the two marks will lead to public confusion, they also took in the degree of similarity between them. If both marks compete for the same group of customers was another consideration in determining whether there was infringement. Thom Browne made the case that they do business in several markets, cater to various clientele, and provide their goods at glaringly different pricing points. The jury considered the possibility of consumer base confusion, and for the same reason, proof of actual confusion was sufficient to establish the likelihood element. Similarly, to this, it may turn out that there is no evidence of genuine perplexity.

They also considered the intention behind Browne's use of the mark and analysed whether it acted in bad faith or took proper due care and attention without turning blind eye to it.

The jury determined the arguments of trademark dilution by Adidas by taking into account the following three factors:

1. How prevalent is the Adidas Three Stripe Mark

2. Was it well-known before Thom Browne began selling any of the goods bearing the mark in question

3. Will Thom Browne's adoption of the "Four Bar and Grosgrain" design weaken the distinctiveness of the Adidas logo?

The jury of eight members determined that Thom Browne Inc. is not responsible for the trademark infringement or dilution of the Adidas mark after about three hours of discussion. Also, Thom Browne Inc. was not held accountable for losses or earnings from the sale of goods with the four-stripe pattern and its signature red, white, and blue grosgrain ribbon motif. As a result, the complaint was completely dismissed by the court's decision. This ruling has effectively ended Adidas' monopoly over the "three-stripe" logo and will undoubtedly have an impact on other nations, particularly India.

Adidas was dissatisfied with the decision and would go forward with vigilantly enforcing its intellectual property rights in accordance with the law, by filing necessary lawsuits.

This judgment has generated a plethora of discussions on famous marks and their degree of identifiability. So, we anticipate that this decision will lead to an increase in trademark litigation cases in India.

Image Source: http://surl.li/hwwil

*This article is authored by Isha Agarwal & Ritika Agarwal, Students from Symbiosis Law School, Noida and reviewed by Suryatej Singh Tanwar, Student from Symbiosis Law School, Noida.