What the law expects from so-called positional trade marks and the way such marks must be represented has been clarified in the recent Court of Appeal judgment in Adidas v Thom Browne. The decision sets out how far a trade mark registration can stretch before it loses the clarity needed to operate effectively, offering timely reminders for fashion brands that rely on visual features placed in consistent locations on clothing and accessories.
Positional trade mark
A positional trade mark refers to a combination of an element – such as a stripe, logo, or pattern – and its specific placement on a product. Its distinctiveness lies not simply in the graphic component but in the fixed relationship between that component and a particular point on the goods. When that relationship is applied consistently over time, it can become a recognisable sign in its own right.
In fashion, placement often performs a signalling function comparable to a traditional logo. The location of a stripe, for example, running down the side of trousers can act as a shorthand for origin, particularly when repeated across collections. These placement-led identifiers have therefore become part of the design vocabulary by which brands differentiate themselves and communicate with consumers.
Adidas v Thom Browne
Adidas’ dispute with Thom Browne centred on several registrations for three-stripe position marks. These marks specified in their accompanying written descriptions that the stripes appeared along particular parts of garments. The High Court concluded that eight of the registrations were invalid because the interplay between the written descriptions and the images did not produce a single, clearly defined sign [see HERE]. Instead, the descriptions were drafted in a way that opened up multiple possible versions of the mark, exceeding what the illustrations conveyed.
The difficulty arose because the descriptions permitted wide variations in length, direction, and positioning of the stripes. Although the images showed a single execution, the wording allowed many more, generating uncertainty about where the boundaries of the registration lay.
The High Court also decided that Thom Browne’s four-stripe design did not infringe those Adidas’ marks that remained valid, finding that the scope of protection could not be expanded through interpretation to cover what the registrations did not capture precisely.
The appealed marks
Adidas appealed the invalidation of six position marks:
- two covering stripes placed along the sleeve of a tracksuit top;
- two covering stripes applied down the leg of trousers; and
- two covering stripes positioned along the side of a vest.
The written descriptions supporting these marks included wording such as, “three parallel equally spaced stripes… running along one third or more of the sleeve.” Similar variations appeared across the registrations. This “one third or more” phrasing introduced an open scale of possibilities. It meant the stripes could begin and end at different points, and could run to differing lengths, while still falling within the description. The images, however, depicted a single arrangement.
This disconnect proved central to the Court of Appeal’s reasoning.
The Court of Appeal’s decision
The Court of Appeal upheld the High Court’s findings.
It emphasised that a trade mark registration must define a single sign and must do so with sufficient clarity and precision that others can understand its scope. The appealed marks failed on both counts.
The statutory requirement that a sign be represented in a clear and precise manner is intended to avoid uncertainty about what a registration protects. Where the description creates a broad set of potential manifestations, the registration no longer anchors a single sign.
The Court accepted that some variation may fall within a single sign, provided that the variations remain within coherent boundaries. But here the descriptions created a range of permutations far beyond what could reasonably be regarded as a single identifier. The gap between the images and the wording meant they did not operate together to convey one stable sign. The Court of Appeal therefore confirmed that the registrations did not satisfy the representational requirements of trade mark law.
What this means for fashion brands
Alignment
For fashion businesses, the judgment reinforces the need for accuracy in how positional identifiers are defined for registration. Many brands rely on repeated placement of stripes or other small visual elements to build association with consumers.
If the written description accompanying a trade mark application extends beyond what is depicted, the registration risks being viewed as covering several possible signs rather than a single, identifiable one.
This highlights the importance of internal alignment when developing a new identifier. The creative concept chosen at the design stage must be expressed with equal precision in the trade mark application. If the representation and description diverge, the resulting vagueness may undermine the protection the brand expects to secure. A broader description can seem appealing, but this case illustrates that such drafting may dilute rather than reinforce the effectiveness of the mark.
Consistency
The judgment also underscores the role of consistency in the long-term viability of positional marks. If a brand applies a supposed identifier in multiple, materially different ways across collections, it may weaken the stability of the sign. As fashion increasingly relies on cross-category experimentation, limited editions, and collaborative capsules, the predictability of any placement-based feature becomes more important. A sign intended to serve as an indicator of origin needs repeated and uniform use if it is to retain distinctiveness.
Familiarity is not enough
The decision also clarifies that recognition in the market does not offset representational deficiencies in the trade mark register. A motif or placement may be well known, but if the registration documents do not define it with sufficient precision, that recognition cannot fill the gap. For brands operating internationally, this may prompt a review of portfolios to ensure that registrations for positional elements are framed in a manner capable of withstanding similar scrutiny elsewhere.
The need for discipline
The Court of Appeal’s judgment shows that positional trade marks require a disciplined approach to definition, representation, and use. Brands need to consider how they frame the boundaries of their visual identity, how these boundaries are recorded in the register, and how consistently the sign is executed across products. Careful definition and coherent application can help ensure that such registrations remain effective over time.
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