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

The judge considered the law in some detail at [112]-[139]. Most of her account is uncontroversial, but I must set out two passages.

First, the judge said:

“135.

… the mere fact that a mark includes a number of possible variations or permutations will not inevitably render it invalid.  It may very well do so, but it is clear from the authorities to which I have referred that the issue must be determined having regard to the considerations set forth above and the specific facts of the case.  The degree of precision required in any case (and thus the extent of the permissible variations) will depend on the nature of the mark itself.  It is clear from the authorities to which I have referred that colour marks give rise to very specific and particular issues which may not arise in relation to other types of marks.

136.

Support for this conclusion may be found in Kerly’s Law of Trade Marks and Trade Names (seventeenth edition) which points out at 2-066 that a word mark, which is represented by the word in capitals in plain type, will cover the word in a wide range of typefaces because the representation is clear and precise …. 

137.

However, consistent with my view that everything will turn on the individual mark itself, Kerly goes on to say (also at 2-066) that:

‘[t]here are other marks where the degree of permissible variation is going to be very small indeed, if not practically non-existent.  It may well prove easier to justify permissible variation where the variation occurs in the actual use made of the mark, so that it can be seen and/or proved that the public see the same mark’ (emphasis added). 

I understand this to be a short hand for saying that if the public were to be exposed to all possible permutations of the mark, it would not be confused as to origin - it is in that sense it would ‘see the same mark’.  However, even then, Kerly acknowledges that in many cases (though not invariably) the notion of permissible variation ‘has to be expressed in a series of images or marks’.” 

In so holding, the judge rejected a submission by TB that the test for determining the permissible degree of variation was whether the differences between variations would go unnoticed by the consumer (i.e. the test for identity of marks and of marks and signs established by the CJEU in Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA [2003] ECR I-2799). TB does not challenge that conclusion.

Secondly, the judge said at [139]:

“Finally I should return to the reasoning in Dyson for a slightly different point upon which TB relies.  In that case the graphic representations of the sign were expressly said by Dyson to be ‘merely examples of it’.  Accordingly, while consumers could identify visually those graphic representations they could not be ‘assimilated to the subject matter of the application’ (at [36]).  Instead, the subject matter of the application ‘is in actual fact a mere property of the product concerned and does not therefore constitute a “sign”’ (at [39]).  It is TB’s case that the CJEU made clear in Dyson that it is not acceptable to have a description which allows for what TB describes as ‘additional unrepresented signs’, i.e. signs which are not depicted in the graphic representation because that representation is merely said to be an ‘example’.  TB frames this as an additional answer to the ‘permissible variations’ point.  Specifically, TB says that variations are impermissible if they are not depicted and can only be understood having regard to the wording of the description.  I shall return to this point when considering the adidas Marks in due course.”

The judge applied the law to each of the Trade Marks in the following passages of her judgment: Tracksuit Top Mark 588 at [175]-[198]; Tracksuit Top Mark 095 at [199]-[203]; Tracksuit Bottom Mark 661 at [205]-[214]; Tracksuit Bottom Mark 093 at [215]-[219]; Vest Mark 612 at [227]-[236]; and Vest Mark 092 at [237]-[241].

In her submissions in support of the appeal, counsel for adidas focussed on following paragraphs concerning Tracksuit Top Mark 588:

“181.

Although the description does not refer to the illustration, reading the two together (as I must) suggests that the illustration is intended to show the position of the Mark on an upper garment with sleeves.  Thus it shows the three stripes running the full length of the sleeve (save for the cuff) and also shows that the stripes are located on the outer lateral surface of the sleeve (albeit that this is not specified in the description).  Absent the words ‘running along one third or more’ it would not be difficult to interpret this Mark as being restricted to what is shown in the illustration.  However, that would be to ignore those words, which to my mind convey the intention that the Mark may take different forms, or to put it another way, that the illustration is intended as an example only.

182.

That this is a correct interpretation of the Mark is acknowledged by adidas …

…

191.

Examples of the potential variations encompassed within this Mark owing to the fact that the length of the stripes may differ and their starting and finishing point on the sleeve is not fixed were amply illustrated within … the Cancellation Division’s decision …, as follows: 

192.

For a long sleeved garment, the stripes might start at the collar and run to the elbow, they might start at the cuff and run to the elbow, they might run across the elbow but not reach as far as either the collar or the cuff, they might together be many differing lengths as long as they cover more than one third of the length of the sleeve. Similar variations will apply to a short sleeved garment where the proportions will obviously be very different.  None of these variations is illustrated or contemplated in the pictorial representation and I disagree that they are properly to be regarded as ‘minor’.  Indeed I note in this regard that the Cancellation Division focuses on ‘minor differences in the lengths of the stripes’ whilst apparently not also paying full attention to what I consider to be the significant difference in appearance caused by the fact that the starting and finishing point of the stripes is not fixed. 

193.

Furthermore, once one accepts that the pictorial illustration can only be an example and that the length, the starting point and the finishing point of the three stripes may change, it is difficult to see why the actual position of the stripes running along the sleeve may not also change.  There is nothing in the description to indicate that the stripes are to be on the outer lateral side of the sleeve (as opposed to, say, the underside of the sleeve). 

194.

Accordingly I cannot see that the description of the mark when read in conjunction with the pictorial representation is clear and precise. Although the words in the description ‘one third or more’ are clear in themselves, what this might mean in practice, given the example that has been chosen to illustrate the Mark showing only stripes running the full length of a sleeve from collar to cuff, is very far from clear.  It certainly involves a number of unrepresented signs.  

195.

I accept that the pictorial representation is not in itself inconsistent with the description, in that the stripes shown in the graphic do indeed run along ‘one third or more’ of the length of the sleeve, but once it is appreciated that this is intended only as an example, I cannot see that it assists in providing clarity.  I disagree with adidas that taking the Mark as a whole, the relevant public would perceive a single sign with only a limited degree of variation relating to the length of the stripes, as explained in the text.  In my judgment, on its proper reading, the public would perceive a sign which is intended to cover a wide variety of different forms, none of which (with the exception of the example given in the illustration) is readily ascertainable from the words and illustration used; it would be wholly unclear what the mark consists of.  Applying the formulation used by Kerly to which I have referred above, I do not consider that the public, if exposed to every possible permutation, would ‘see the same mark’.    Furthermore, the confusion created by this state of affairs precludes the potential for consumers to (in the words of the Cancellation Division) recall ‘one particular combination and therefore repeat their purchasing experience’.          

196.

In the circumstances, I consider that this Mark fails to satisfy the identification requirements in the TMA.  It does not correspond to one single, clear precise, objectively ascertainable sign.  The mark will not always be perceived unambiguously or uniformly and it follows that the authorities and the public will be left in a state of confusion as to the nature and scope of the sign. Contrary to the principles that lie behind section 1(1) TMA 1994, this would give adidas an unfair competitive advantage.”

Owing to the way in which the case was argued before her, the judge was not explicit in this passage as to whether she concluded that Tracksuit Top Mark 588 failed to comply with the first condition, the second condition or both. Upon analysis, however, I consider that her findings amount to a conclusion that the Mark failed to comply with either condition: the subject-matter of the registration was not a single sign, nor was it represented clearly and precisely.