In the world of fashion, brand recognition often depends not on a name, but on exactly where a specific element is placed. It could be the red sole of a shoe, a unique stitch on a denim pocket, or stripes on a sleeve. These are known as “position trademarks.”

A recent UK case between the sporting giant Adidas and the fashion house Thom Browne has become a definitive guide on how courts evaluate these unconventional trademarks. While Adidas sought to protect its three stripes and Thom Browne defended its four, the court’s findings are vital for any business.

What is a Position Mark?

The court defined it simply: it is a combination of a visual element (such as stripes) and its specific, consistent placement on a product. For such a mark to avoid invalidation, it must be:

1. A distinctive sign.

2. Represented graphically in a way that clearly shows where it begins and ends.

3. Capable of soul-distinguishing the goods of one company from those of another.

The UK Problem: No Official Category

Unlike the European Union, the UK’s official register does not have a dedicated category for “position marks.” They are typically registered as figurative marks (images) or 3D objects.

This creates confusion: how do you determine exactly what is protected — the image itself or its specific location on the garment? The Adidas v. Thom Browne case analyzed this question in detail for the first time in British legal history.

The Court’s Main Conclusion: Precision is Everything

Adidas’s biggest hurdle was how they described their stripes in the registration documents. The judge invalidated 8 out of 16 of Adidas’s registrations due to a “lack of clarity and precision.”

Instructive Examples:

• The Loss (Mark No. 808): The description stated that the stripes ran “substantially along the entire length” of the sleeve or trouser leg. The judge ruled that the phrase “substantially along the entire length” was too vague. Does it mean 50% of the length or 90%? Due to this ambiguity, the mark was declared invalid.

• The Win (Mark No. 646): This mark concerned three stripes on footwear, positioned “between the laces and the sole.” Because the graphic clearly showed the location and the description left no room for interpretation (no “slightly above” or “slightly below”), the court upheld this mark as valid.

Three Stripes vs. Four

Adidas argued that Thom Browne’s four stripes were too similar to their three. However, the judge ruled that even if all of Adidas’s marks had been valid, there would still be no infringement.

1. Placement and Orientation: In position marks, this is paramount. If stripes on one product run vertically and on another horizontally, or are placed in different locations, the court may find them entirely dissimilar.

2. The Attentive Consumer: The court ruled that the average clothing consumer is perfectly capable of distinguishing three stripes from four.

3. Lack of Confusion: Adidas failed to prove that people actually buy Thom Browne thinking it is Adidas. Out of years of parallel existence, only 11 Instagram comments were found where users mentioned Adidas under a Thom Browne photo. For the court, this was insufficient.

4 Lessons for Brand Owners

1. Be Extremely Precise: When describing the placement of your logo, avoid words like “approximately,” “predominantly,” or “part of.” The description must perfectly match the graphic representation.

2. Location Matters: Your protection only extends to where you specified. If you registered a stripe on a pocket, you likely cannot stop someone from putting a stripe on a collar.

3. Prove Distinctiveness: Position marks are rarely considered unique on their own (courts may view them as mere decoration). You must gather evidence: sales figures, advertising spend, and consumer feedback confirming that people recognize you specifically by that element.

4. The UK is Not Europe: This case demonstrated that British courts are much stricter regarding trademark descriptions than European ones. A registration that passed in the EU may be struck down in the UK.

The Bottom Line: If your brand is a “stripe in a specific place,” ensure your lawyers have measured it to the millimeter in your documentation. Any flexibility in your filings today could result in a total loss of protection tomorrow.

Founder of Research & Patent group Intectica, author of patent algorithms for solving problems in the pharmaceutical industry, patent attorney certified in all intellectual property objects (Patents, Design, TM), with education in chemistry and law, chief expert of the patent institution of Ukraine UKRPATENT (1997-2004). Member of international organizations, including ECTA, PTMG, UAM, lecturer and blogger.