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

The issue raised by TB’s challenge to the registrability of the Trade Marks was described in the agreed list of issues for trial as follows: “Do the adidas Marks (and each of them) constitute signs represented in the register in a manner which enables the determination of the subject matter of the registration with sufficient clarity and precision?” This issue encompasses two sub-issues. First, is the subject-matter of each registration a sign? Secondly, if so, does the graphical representation of that sign comply with the applicable requirements, and specifically the requirements of clarity and precision? In other words, do the Trade Marks comply with the first condition and with the second condition discussed above?

As counsel for adidas accepted, TB’s statements of case raised both of these sub-issues. As counsel for TB accepted, TB’s submissions to the judge did not distinguish between them. The judge summarised TB’s arguments at [143] as follows:

“TB’s general objections to the adidas Marks set out in written submissions are fivefold, namely that (i) the mark can be represented in an impermissible multitude of forms; (ii) the [written] description of the mark is inconsistent with the graphic representation [i.e. the pictorial representation]; (iii) there is a lack of clarity and precision in the description; (iv) there is a lack of clarity as to colouring and (v) many of the marks are objectionable because they contemplate ‘unrepresented signs’ (i.e. a complaint arising by reference to the Dyson decision).  However, at one point in his closing submissions, Mr Roberts expressed the view that the question of registrability may well ‘collapse down’ to what the degree of variation within the adidas Marks may properly be said to be upon interpretation of those marks and whether such variation is permissible or not.”

Upon analysis, I consider that objections (i) and (v) amount to arguments of non-compliance with the first condition and that objections (ii), (iii) and (iv) amount to arguments of non-compliance with the second condition.

Although in many cases factors which lead to non-compliance with one condition will also lead to non-compliance with the other condition, this is not necessarily the case. The two conditions are independent and cumulative conditions, and it is better to consider them separately.