A stripe more or a stripe less?

Thom Browne may have escaped consequences for the extra stripe in the Adidas matter, but this might really be an exception to the rule

Last week, Adidas lost a hard fought trademark dispute over its striped design signature against Zegna-owned American designer brand, Thom Browne. The sportswear giant argued that luxury brand Thom Browne Inc’s four stripes were too similar to its famous, and globally recognised, three stripes. The courts disagreed.

Browne’s designs often feature four horizontal, parallel stripes, encircling the arm of a garment — in fact, they are frequently seen on the creator Thom Browne himself, who invariably sports a sock with the four stripes under dispute.

Designer Browne testified in front of an eight-person jury at Manhattan’s Southern District Court that his love of sports inspired his use of “varsity stripes”. He said he wanted to create an “external signifier” that would render his label immediately recognisable. This led him to the three stripes usually featured on varsity sweaters and collegiate pieces.

In 2007, Adidas, however, complained that Thom Browne was using a three-stripe design on jackets, which was similar to the German sportswear brands’ stripes. Mr Browne agreed to stop using the same, and added a fourth stripe — calling it his Four-Bar Signature.

In 2018, when Thom Browne applied for a trademark of its Grosgrain Signature — a red, white and blue-stripe logo — in Europe and expanded into sportswear, Adidas objected. Attempts at resolving the issue through discussions and reconciliation failed, and in 2021 Adidas approached the  New York federal court claiming that Thom Browne  was “selling athletic-style apparel and footwear featuring two, three or four parallel stripes in a manner that is confusingly similar to Adidas’s three-stripe mark,” and sought $867,225 in damages, as well as $7,011,961 in profits.

Adidas, by the way, is known to be overly litigious as a company, a reputation it has earned thanks to several high-profile lawsuits, such as those versus  Skechers, Juicy Couture, Marc Jacobs and recently Kanye West.

While a stripe more or a stripe less was something for the courts to decide upon, a legal term called “laches” has been key to Mr Browne’s defence — a question, “why did it take you so long to bring the claim forward?” In common law legal systems, laches is a lack of diligence and activity in making a legal claim, or moving forward with legal enforcement of a right, particularly in regard to equity. This means that it is an unreasonable delay that can be viewed as prejudicing the opposing party. The four years of unsuccessful talks starting 2018 between Adidas and Browne after the activewear brand discovering a pair of four-stripe sweatpants in the Thom Browne collection has become the main fulcrum of the dispute with the defendants saying, “If you were going to take action, why didn’t you take it sooner?” Thom Browne said in court, “You let us continue in the marketplace for years and then you now say we can’t do it.” In the US, courts allow six years in the marketplace for laches. Mr Browne’s team insisted that Adidas should have known of any alleged infringement before 2012. Following that, laches would apply.

So in a manner of speaking, Thom Browne’s switchover to four-stripes after Adidas’ complaint of 2007 needed to be either not accepted 15 years ago, or needed to be contested by 2012. Adidas waited till 2018 to renew its quarrel and then took another three years to knock on the doors of the court. And that eventually, became the biggest weakness of its case.

Back to the stripes. Adidas’s argument was that Thom Browne’s use of stripes, particularly in its newer sportswear collection, would cause the general public to confuse Thom Browne’s designs for its own products. Thom Browne countered that the sportswear giant does not own stripes per se. The jury agreed.

Which really brings us to an interesting question: If the stripes are not legally defensible, does Adidas need to change its logo? What’s the point in having a global trademark that can be added on to (or subtracted) with more stripes (or less) with impunity, and without protection or penalty? That may really not be required as the company, though “disappointed with the verdict”, will continue to “vigilantly enforce” its intellectual property.

Are there any lessons for us in India?

A distinct oft-misunderstood aspect of trademark law is that making a small change will create a new product. Virgil Abloh was famous for saying if you changed three percent of an object, you created something new. To me, that doesn’t ring true.  Thom Browne may have gotten away with the extra stripe in the Adidas matter but this may really be an exception to the rule. Imitation or distortion of trademarks is generally not defensible.

In the Adidas case, the limitation of time — laches — was its biggest shortcoming. Not reacting or objecting for years actually lost it the case.

And that is by far the most important lesson: Timely and prompt recourse to the law is key in trademark protection.

The writer is managing director of Rediffusion