In the latest round of an ongoing, multi-national legal battle between adidas and Thom Browne, a trademark appeal board in Europe has questioned whether the fashion brand’s multi-stripe motif is distinctive enough to warrant registration under EU law. In a decision early this month, the Second Board of Appeal for the European Union Intellectual Property Office (“EUIPO”) suspended appeal proceedings and referred the case back to the trademark examiner to reassess whether Thom Browne’s five-stripe motif lacks the necessary distinctive character, suggesting consumers may view the mark more as a decorative element rather than as an indicator of the source of the goods upon which it appears.
The Background in Brief: Thom Browne, Inc. filed a trademark application in November 2017 to register a figurative mark consisting of five vertical stripes in white, red, and navy – for use on a range of goods in Classes 18 and 25, including leather bags, coats, jackets, and footwear. adidas opposed the application in early 2018, arguing that the multi-stripe motif infringes its three-stripe trademarks, which are registered across the EU and internationally for similar goods. adidas invoked Articles 8(1)(b), 8(4), and 8(5) of the EU Trade Mark Regulation (“EUTMR“), citing both likelihood of confusion and reputational harm.
In January 2024, the EUIPO’s Opposition Division rejected adidas’s claims in their entirety, finding that the Thom Browne design was sufficiently distinct and did not give rise to consumer confusion, prompting adidas to appeal.
A Fundamental Deficiency?
In an unexpected procedural twist, the Second Board of Appeal suspended the appeal proceedings without taking on the issue of confusion, which was the crux of adidas’s appeal. Instead, the Board referred the case back to the examiner to consider absolute grounds for refusal for Thom Browne’s application for registration, specifically whether the mark lacks distinctive character under Article 7(1)(b) EUTMR.
> Article 7(1)(b) requires that a mark must be capable of identifying the commercial origin of the goods or services it covers and distinguishing those goods or services from those of other undertakings in order to be subject to valid registration.
In other words, while adidas appealed based on relative grounds (likelihood of confusion), the Board did not assess adidas’s arguments on that front, as it determined that the Thom Browne trademark might not even meet the basic threshold of distinctiveness required for registration and fails on absolute grounds regardless of whether there’s confusion with adidas’s marks.
At the heart of the Board’s decision to remand the matter is the “excessively simple” design of Thom Browne’s “basic geometrical” mark. The Board held that despite the use of color and varying stripe widths in Browne’s five-stripe motif, the mark may be fundamentally decorative and lack distinctiveness. “None of the elements … are likely to present aspects or communicate a message [that is] easily and instantly memorized by the relevant public,” according to the Board, which concluded that the design is likely to be perceived “as a common decorative element of the goods on which it is affixed,” rather than as an indicator of commercial origin.
Citing a string of prior EU court decisions, the Board emphasized that minimalist or geometric elements, including stripes, generally lack distinctiveness unless applicants can show that the design has acquired distinctiveness through extensive and widespread use across the EU. In this case, the Board held that in its opinion, neither the mark “as a whole, nor its specific features … are able to catch the relevant consumer’s attention” or act as a trademark.
For adidas, the Board’s referral postpones any win – or loss – on the likelihood of confusion issue. For Thom Browne, it opens a new front: proving that its five-stripe motif is not just decorative flair, but a recognizable source identifier in the eyes of EU consumers. Without such proof, the application risks being refused on absolute grounds.
THE TAKEAWAY: The Board’s suspension of adidas’s appeal underscores a growing trend in EU trademark jurisprudence: an increasing reluctance to grant or uphold registration for abstract or simple marks unless the applicant provides compelling evidence of secondary meaning. It also reinforces the EUIPO’s current stance: minimalist design elements, even when used consistently by high-end brands, are not immune to scrutiny. Nevertheless, it appears to echo other trademark-centric losses for legacy brands, in which courts and tribunals have ruled that history and aesthetic prestige are insufficient without proof of contemporary consumer recognition.
Share
