Adidas – Thom Browne. Trade mark registration of a person’s face.

ADIDAS – THOM BROWNE

Adidas has lost a legal dispute in the US, after suing luxury designer Thom Browne for infringement of its three-stripes trade mark. 

The dispute already arose in 2007 when Browne used a three-stripes sign on a jacket. In that occasion, Adidas managed to prevent the designer from using the three-stripes, and he agreed to modify his design by adding a fourth stripe. 

Then in 2021 Adidas sued Browne for the “four-bar signature”, consisting of a four parallel stripes design placed on different garments, such as socks or jackets.

The German company claimed that the four-stripes design featuring on Browne’s items was likely to cause confusion among consumers, as they would associate the parallel stripes with Adidas’ three-stripe trade mark, considering that the goods were identical. 

For this reason, Adidas asked the Court to prevent Browne from using the contested design, as it was infringing their trade mark. Furthermore, the sports brand sought $7.8 million in damages, plus a share of the revenue generated by Browne. 

From its side, Browne argued that as stripes were a common design element for clothing and the number of stripes differed, the risk of confusion between both signs was unlikely, as they “operate in different markets, serving different customers, and offer their products at strikingly different price points”. 

An eight-person Manhattan jury considered that the four-stripes design was not likely to cause confusion among consumers, thereby confirming Browne’s claims.

TRADE MARK REGISTRATION OF A PERSON’S FACE 

Last December, the Examination Division of the EUIPO partially rejected several European Union Trade Mark (EUTM) applications, including 18603544, 18585965 or 18585956. 

The applications were filed by the Dutch company Trend Development B.V., and consisted of figurative trade marks featuring AI-generated faces of well-known historical figures, such as René Descartes or Nefertiti. The EUTM applications covered a wide range of goods and services in classes 9, 35 and 41. 

The EUIPO Examination Division partially rejected the EUTM applications, as regards certain services claimed in classes 35 and 41, for lack of distinctive character, pursuant to article 7.1.b) of the European Union Trade Mark Regulation (EUMTR). 

The decisions declaring the partial refusal were based on the grounds that although it was possible to register a person's face as a EUTM, it might be more difficult to prove the distinctive character of the sign. Moreover, the perception of the inherent distinctiveness of the sought trade marks should be the same among the relevant public in all the territory of the European Union.    

Furthermore, the distinctive character must be assessed in relation to the goods and services sought in the EUTM application. This means that, for instance, the photograph of a singer cannot be registered for “cultural activities” as the sign would not be perceived by the consumer as a source of the commercial origin.  

Moreover, the face must be recognisable, meaning that it must own some reputation, in order to be considered as an indicator of commercial origin. 

The above mentioned decisions are still within the period for lodging appeals, so we will keep you posted.