New York designer Thom Browne's company (part of the Ermenegildo Zegna Group since 2018) recently prevailed in a dispute brought by adidas before the District Court for the Southern District of New York to protect its famous trademark consisting of the characteristic three parallel stripes. The U.S. Court recognised that Thom Browne, a designer known for his high-end tailored clothing, had not infringed the German multinational company's trademark rights by affixing a motif consisting of four parallel stripes to his clothing and footwear models.
In reality, the trademark dispute between the two companies had already been pending for a few years. Indeed, as early as 2018, adidas had filed an opposition before the European Union intellectual property office (EUIPO) against a Community trademark application filed by Thom Browne to protect a sign consisting of four parallel stripes. That opposition was followed in 2020 by other oppositions before the United States Patent and Trademark Office in which adidas challenged three trademark applications for red, white and blue stripes to distinguish the footwear produced by the New York designer. adidas considered that all of the above-mentioned trademarks applied for by Thom Browne were confusingly similar with its own earlier registrations claiming the famous three stripes.
Returning to the current decision of the Southern District Court of New York, the German sportswear giant had filed a lawsuit against Thom Browne in June 2021, claiming that Thom Browne's use of a sign consisting of parallel stripes infringed its trademark rights and constituted confusingly unfair competition in the sportswear sector.
In fact, the German company claimed that Thom Browne's use of a mark similar to its own famous three-stripe mark used by adidas for over fifty years caused confusion among consumers as to the origin of the goods themselves, or otherwise led them to believe that there was some collaboration or affiliation between the two companies. In particular, adidas challenged Thom Browne's use of the stripes in a manner similar to its own three-stripes sign, thereby creating confusion in both the aesthetic appearance and the overall commercial impression that such products provided. adidas claimed that, in particular, the products in the category of sportswear and sports shoes manufactured by the American company were identical to the same categories of products that had long been marked with its own three-stripe mark.
In addition to the obvious similarities between the trademarks of the parties, adidas' accusation was also strongly focused on the element of competition because, in order to ground its claim for damages of approximately $8 million, the German company had pointed out to the U.S. judge that Thom Browne was not only using the four stripes in its core business, i.e. high fashion clothing, but was invading in an increasingly aggressive manner the sportswear segment and in general the sectors where adidas is market leader. And this not only with the expansion of its sportswear range, but also through promotional agreements such as the one concluded by Thom Browne with the famous Spanish club F.C. Barcelona.
Arguing the total difference between the respective distribution channels of luxury and sportswear, as well as the wide gap between the prices of the respective products, the American company's defensive argument was obviously centred on the absence of any risk of confusion for consumers. Perhaps more interesting and less obvious is what Thom Browne's defence also argued in noting how adidas waited a long time before taking legal action against its own use of the stripes. As already did in other jurisdictions, also before of the New York Court Thom Browne pointed out that adidas had already objected to Thom Browne's use of three horizontal stripes on his garments as early as 2007, but then tolerated for a long time the use of four parallel horizontal stripes on his apparel products, which Thom Browne had begun on purpose in order to distance himself as far as possible from the German company's trademarks.
In essence, Thom Browne thus argued that adidas' delay in taking action to prevent him from using its own four-stripe trademark was unreasonably long because the German sportswear giant knew, or reasonably should have known, that Thom Browne was using a four horizontal stripes design. For the New York designer's counsel, this would also have constituted implicit proof that the respective striped brands had in fact co-existed on the market for a long time without adidas having suffered any damage.
While Thom Browne obviously welcomed his own acquittal, pointing out that for over twenty years his company has been an innovative brand in the luxury fashion segment, where it offers a completely unique and distinctive design that combines classic tailoring with American sportswear sensibilities. On the other hand, adidas has already declared that it will appeal the New York District Court ruling, a decision that not surprisingly comes on top of other negative ones suffered by the German multinational in the EUIPO and that have already called into question the distinctive character of its three-stripe brand.