Three Stripes, You’re Out! - Adidas rekindles stripes battle with hardliner Aviation Nation.

Stripes in fashion have stood the test of time. Seasons in and seasons out, it doesn’t waiver in presenting itself in variations from thin lines to the chunkiest of patterns. We’ve seen it on our grandparents, parents and everywhere with our peers who are keen to wear the latest Thom Browne suit jacket or Adidas hoodie. One must ask the question, however, especially for new fashion sector entrants, is it a print that you can do much with considering the frantic legal battles for ownership by reputed brands? – in this case Adidas.

First came… Thom Browne

Setting the stage for the now-completed trademark trial, Adidas filed a trade mark infringement and dilution suit against Thom Browne in June of 2021. Adidas who have been using the mark since the 1950’s claimed that Thom Browne was in direct competition with it by using a mark that is confusingly similar. Thom Browne through its counsel doubled down on its argument, to which I agree, that Adidas does not have exclusive monopoly to stripes. In my opinion, the purpose of trade mark protection is to protect trade marks from infringement and not a means of policing and engaging in aggressive enforcement tactics which seems to be the case with Adidas.

Furthermore, Thom Browne emphasised the divergent nature of their markets with Thom Browne’s offerings catering to an upscale clientele unlike Adidas which applies its striped mark on athletic wear and accessories. Agreeably, the court weighed in favour of Thom Browne holding that the designer was not liable for damages or profits selling its four striped offerings.

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Then came… Thom Browne AGAIN!

Hoping for a sudden streak of good luck, Adidas took another bite of the cherry, filing an appeal in the New York Federal Appeals court on grounds that the lower court judge favoured Thom Browne by misguiding the jury on how to measure consumer confusion alongside its refusal to include one of Adidas expert witness while the trial persisted.

The Appeal court reiterated the lower court’s direction to the jury, that the focus of the case included both presale and post sale confusion unlike Adidas argument that the lower court told the jury to focus on point of sale confusion. On the issue of exclusion of Adidas’ expert witness, the Appeals court did not identify any abuse of discretion caused by the lower court.

Hence, the Appeal’s court affirming the lower court’s judgment held in a summary order that Adidas “cannot show an error, let alone a prejudicial one, in the district court’s charge.” This case yet again shows Adidas trade mark overreach attempts which initially teetering over the edge, have now traversed into full blown trade mark bullying.

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Enter old flame…. Aviation Nation

Owing to the previous settlement agreements between Adidas and Aviation Nation, you would think that the brands by now would be the poster child for a match made in heaven, right? Think again!

Adidas recently filed a trade mark infringement case claiming breach of contractual terms as Aviation Nation continues to sell sports and related apparel emphasizing its reputed three parallel stripe designs which is likely to cause consumer confusion as to the source and brand connection.

Comparing the marks’ placement, Adidas notes that Aviation Nation has positioned its five stripes on the same place Adidas is known to place its three stripes i.e. the outseam. Adidas also notes that two of the stripes blends into the fabric making the remaining three stripes highly pronounced, giving the garments the illusion of three stripes.

Adidas further argued that Aviation Nation has garnered widespread recognition for its similarly designed striped apparel and uses the same marketing and trade channels as Adidas which is in direct competition with Adidas apparel. Additionally, Adidas argues that the sale of the infringing apparel by Aviation Nation commenced long after Adidas had obtained trade mark protection on their three striped mark, and after the three striped mark had acquired distinction in the US.

Discernibly, Adidas’ incessant trade mark infringement claims seem to be a ploy to discourage new market entrants and stifle innovation. I believe this case is an opportunity for the courts to make a glowing example of brands such as Adidas by restraining trade mark overenforcement and reorient trade mark law to fit its objective, which is consumer interests.

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Weighing in:

This is not the first legal action with Aviation Nation. Adidas mentioned in its court documents that both parties have signed settlement arguments on three separate occasions i.e., 2012, 2013 and 2022 regarding the Adidas striped mark.

However, it is blatantly obvious that Adidas seems to be infatuated with the worldwide recognition of its three striped mark. Adidas has instituted several infringement claims over the years with brands such as J Crew, Walmart, Ralph Lauren, Marc Jacobs, Abercrombie & Fitch to name a few garnering a reputation of being overly litigious. I agree with Counsel for Thom Browne, who put it aptly in his closing argument, Adidas ‘does not own stripes,’ despite its apparent desire for monopoly over the three-striped mark.

The holding of the European Court of Justice (ECJ) involving Adidas is worth referencing. In the case, Adidas sought an injunction against retailers including H&M using ?two striped marks similar to its three striped mark. Arguably, the competitors held that stripe marks are part of the growing list of generic marks used for decorative purposes and should be available for use by anyone. Even so, the courts were quick to note that ‘decorative use’ is not a defence in an infringement claim because it informs on the ‘character’ of the goods concerned.

Nevertheless, I believe that the courts trade mark infringement assessment of the Adidas mark should be two-pronged (i) whether or not Adidas consumers made a mental connection with the Aviation nation mark upon seeing it and (ii) whether or not Aviation Nation’s use of its striped mark takes unfair advantage of or is detrimental to the distinctiveness or the reputation of the Adidas mark. ?Considering Aviation Nation’s differences in color and positioning of its three-striped mark, it will be interesting to see whether the courts will be swayed by Adidas allowing them to finally earn their stripes. Let’s wait and see.

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