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

This is an appeal by the First Defendant (“adidas”) against an order made by Joanna Smith J dated 13 December 2024 in so far as it declared invalid six United Kingdom Registered Trade Marks (“the Trade Marks”) owned by adidas for the reasons given by the judge in her judgment dated 22 November 2024 [2024] EWHC 2990 (Ch). adidas appeals with permission granted by the judge.

In the underlying proceedings the Claimants (“TB”) applied for declarations of invalidity concerning, alternatively revocation of, 16 registered trade marks owned by adidas featuring three stripes on articles of clothing, footwear, bags or hats. The trade marks were attacked on grounds of (i) lack of registrability, (ii) lack of distinctive character and (iii) lack of genuine use. The judge held that the registrability attack succeeded in respect of eight trade marks and failed in respect of the other eight. The distinctive character attack failed against all 16 trade marks, and the non-use attack largely, but not entirely, failed. adidas’ counterclaim against TB for trade mark infringement and passing off was also dismissed.

adidas appeals the judge’s findings that the Trade Marks were invalid for lack of registrability. It does not challenge the judge’s conclusion that two other trade marks were invalid on this ground. Nor does either side challenge any of the judge’s other conclusions.

There have been parallel invalidity proceedings between TB and adidas before the European Union Intellectual Property Office (“EUIPO”) Cancellation Division and Board of Appeal and before the District Court of The Hague in the Netherlands involving what are in substance some of the same trade marks.