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

Fecha: 23-Oct-2025

The Trade Marks

The Trade Marks are shown in the table below:

Registration number	Pictorial representation	Written description	Specification of goods (all class 25)
00903517588		The mark consists of three parallel equally spaced stripes applied to an upper garment, the stripes running along one third or more of the length of the sleeve of the garment.	Sports wear; T-shirts; football shirts; rugby shirts; polo shirts; leotards; sweat shirts; hooded tops; drill tops; jerseys; rain jackets; insulated jackets; hooded jackets; wind breakers; crop jackets; track suit tops; bodysuits; satin shirts; all the aforementioned being upper garments with sleeves.
00002327095		The mark consists of three parallel equally spaced stripes applied to an upper garment, as illustrated below, the stripes running along one third or more of the sleeve of the garment.	Sports wear; T-shirts (including long sleeved, short sleeved and cropped); football shirts; rugby shirts; polo shirts; leotards sweat shirts; hooded tops; drill tops; jerseys; rain jackets; insulated jackets; hooded jackets; wind breakers; crop jackets; track suit tops; bodysuits; satin shirts; all the aforementioned being sleeved, upper garments.
00903517661		The mark consists of three parallel equally spaced stripes applied to a trouser or short, the stripes running along one third or more of the length of the side of the trouser or short.	Sports wear; Three quarter length pants; running tights; fleece pants; lycra shorts; running shorts and hot pants; track suit bottoms; swimming trunks and swimsuit bottoms; all the aforementioned goods being in the nature of trousers or shorts.
00002327093		The mark consists of three parallel equally spaced stripes applied to a trouser or short, as illustrated below, the stripes running along one third or more of the side of the trouser or short.	Sports wear; three quarter length pants; running tights; fleece pants; lycra shorts; running shorts and hot pants; track suit bottoms; swimming trunks and swimsuit bottoms; all the aforementioned goods being in the nature of trousers or shorts.
00903517612		The mark consists of three parallel equally spaced stripes applied to a garment, the stripes running along one third or more of the side of the garment.	Sportswear; all the aforementioned goods being upper garments.
00002327092		The mark consists of three parallel equally spaced stripes applied to a garment, as illustrated below, the stripes running along one third or more of the side of the garment.	Sports wear; replica sports team clothing; replica classic sports clothing; vests and vest tops; singlets; bra tops; leotards; tank tops; sweat shirts; hooded tops; jerseys; body warmers; rain jackets; insulated jackets; hooded jackets; wind breakers; gilets; swimwear; bodysuits; polo shirts; all the aforementioned goods being upper garments.

The Trade Marks fall into three pairs. The Trade Marks with numbers commencing 009 are so-called “comparable” UK trade marks which replaced EU (originally Community) trade marks registered with effect from 3 November 2003 as a result of Brexit. I will refer to these as “the Comparable Trade Marks”. The Trade Marks with numbers commencing 00002 are, and have always been, UK trade marks registered with effect from 5 February 2003. I will refer to these as “the Pure UK Trade Marks”.

The Pure UK Trade Marks differ from the Comparable Trade Marks in three respects. First, the written descriptions in the Pure UK Trade Marks include the words “as illustrated below”, whereas the written descriptions in the Comparable Trade Marks do not. Secondly, in some cases, the wording of the specifications of goods differs. Thirdly, the register entries for the Pure UK Trade Marks contain the statement “Trade mark type Three dimensional mark”, whereas the register entries for the Comparable Trade Marks do not. None of these differences is material to the issues on the appeal. The reasons for this will be explained below.

I shall follow the judge’s and the parties’ example of referring to the Trade Marks as Tracksuit Top Marks 588 and 095, Tracksuit Bottom Marks 661 and 093 and Vest Marks 612 and 092 respectively.