CA-2025-000162 - [2025] EWCA Civ 1340

adidas contends that the judge wrongly focussed on visual differences between the variations encompassed by the written descriptions and failed to consider whether those visual differences would have any impact on the origin message conveyed by the Trade Marks.

This contention is unfounded. The judge did consider whether the visual differences would have an impact on the origin message conveyed by the Trade Marks, for example in [195]-[196], where she rejected adidas’ case that the relevant public would always “see the same mark”.

In adidas’ skeleton argument, it was also argued that the judge should have taken into account the evidence adduced by adidas to establish acquired distinctive character of the Trade Marks, which included evidence of use of variations falling within the ambit of the written descriptions. In oral argument, counsel for adidas accepted that whether something qualifies as a trade mark within the legislative definition is a logically anterior question to that of whether it has distinctive character for the goods or services in question: see Spear v Zynga at [19], [26], [28] and [33]. Accordingly, she retreated to a submission that the judge should have taken the evidence of use into account by way of a “cross-check” on her conclusions.

I do not accept even that more modest submission. The logical problem remains the same. Furthermore, the evidence of use does not shed any light on how the relevant public would understand the written descriptions. It does not even show either that a large number of variations falling within the scope of the written descriptions have been used by adidas, still less that they are all understood by the relevant public as conveying the same message as to trade origin (there is, for example, no survey evidence before the Court).