Sean Hutchinson

July 2024

Background

In 1999, Adidas obtained a registered trade mark for trousers having three stripes vertically arranged between the waistband and the hem. The trade mark was registered in black‑and‑white and thus did not specify any colours.

Then, in 2022, Nike offered five different pairs of trousers for sale in Germany. These had:

1. three light blue stripes on a dark blue background,
2. two white stripes on a black background,
3. two green stripes on a white background,
4. two light blue stripes on a dark blue background, and
5. two dark blue stripes on a white background with a red stripe between them.

In all three cases, the stripes were vertically arranged between the waistband and the hem, as in Adidas’ trade mark.

Thus, Adidas applied to the District Court of Düsseldorf for a preliminary injunction against Nike in respect of these five pairs of trousers. The court granted this injunction, and Nike then appealed the decision to the Higher Regional Court of Düsseldorf.

The Appeal

At appeal, the court noted that pictures, motifs, symbols, and words present on the external surface of items of clothing are not typically recognised by the average consumer as indicating the origin of those items of clothing, and thus do not usually function as trade marks. However, the court noted that Adidas routinely uses three stripes along the sides of its clothing products and thus held that the average consumer would consider this pattern to indicate the origin of those goods.

The court added, however, that this should not be considered to mean that the average consumer would recognise all items of clothing having stripes along their sides as being produced by Adidas, and thus that the specific patterns applied need to be taken into account.

The court therefore held that the average consumer would not mistakenly believe that Nike’s pairs of trousers having only two stripes along their sides were produced by Adidas, and overturned the lower court’s decision to grant the preliminary injunction in respect of these three pairs of trousers.

Turning next to Nike’s trousers having two dark blue stripes and one red stripe, the court held that the average consumer would recognise these stripes as being decorative due to the use of different colours, rather than as indicators of origin. Adidas attempted to argue that it too uses differently coloured stripes on its products, but this argument was rejected for lack of evidence. Thus, Nike’s appeal succeeded in respect of this pair of trousers, too.

The court then decided, however, that there is a likelihood of confusion between Nike’s trousers having three light blue stripes on a dark blue background and Adidas’ trade mark registration because both give the impression of three stripes along the side of a pair of trousers contrasted against a differently coloured background. Thus, the preliminary injunction was maintained insofar as it applied to this pair of trousers.

Conclusion

This case highlights the reluctance of the courts to recognise patterns as being indicative of origin, and thus that proprietors of pattern-based figurative trade marks can only expect to stretch the scope of protection conferred by their registrations so far when trying to capture their competitors’ activities.

In particular, this case shows that the courts are likely to interpret relatively simple marks, such as an arrangement of three stripes, as conferring only a narrow scope of protection which does not extend to, for example, a similar arrangement of only two stripes.