In a judgment dated 6 September 2024, the Nürnberg-Fürth Regional Court (LG Nürnberg-Fürth) ruled in favor of Thom Browne in the trademark dispute between the luxury brand Thom Browne and the sporting goods manufacturer Adidas (Az. 4 HK O 8208/21).

The luxury brand had previously included a jacket in its collection featuring four horizontal, ring-shaped stripes on the upper arm. Adidas considered this, among other things, a risk of confusion with its trademarked three stripes and unsuccessfully challenged the trademark law.

Course of the proceedings

Specifically, Adidas objected to the distribution and design of the jacket, among other things, by means of an injunction under trademark law pursuant to §§14 (2) sentence 1 number 2, 5 and §§14 (2) sentence 1 number 3, 5 of the Trademark and Other Distinctive Marks Act (MarkenG).

The LG Nürnberg-Fürth overturned the previous partial default judgment of 17 May 2022 and the final default judgment of 23 August 2022 in the trademark dispute and dismissed the action.

It denied the trademark claims. The judgment is not yet final as of today (19 June 2025). An appeal is therefore still possible.

Trademark Law

Many companies register trademarks and take advantage of the competitive advantages provided by trademark law as an industrial property right. The owner of the trademark right can take legal action against third parties who use a registered or similar mark and thus infringe trademark law, in accordance with §§14 et seq., 4 of the MarkenG. 

Trademark protection arises under trademark law according to §4 of the MarkenG through the entry of a registered trademark in the register (number 1), through the intensive use of a mark in commercial transactions (number 2), or through high general recognition (number 3). Examples of things eligible for trademark protection include individual words, word combinations, word/image combinations, pure images, or abstract colors.

Functions of Trademark Law

An important function of trademark law is to protect consumers from confusion with other, seemingly similar products. Among other things, trademark law ensures that third parties can identify the product's origin (the so-called origin function).

Trademark law can enable buyers to identify, for example, luxury brands, as it specifically links the products to the company behind them. Trademark law can create an association with a certain quality standard, design, or similar criteria and recognition factors.

This is also the case with the European Court of Justice, which, in its 2002 decision Arsenal Football Club Plc v Matthew Reed (C-206/01), underscored the importance of the origin function in trademark law: „In this respect, the essential function of a trademark is to guarantee the consumer or end user the identity of the origin of the goods or services identified by the trademark, [...] by enabling them [...] to distinguish them, without any risk of confusion, from goods or services of another origin.“

This is accompanied by the so-called trust or guarantee function in trademark law. Trademark law creates a connection between past experiences with a brand and a certain level of quality. This builds trust or a guarantee that another product of the same brand will meet the same level.

Furthermore, trademark law includes an information function. In this function, the trademark acts as a communication channel and enables customers from different segments of the public to recognize, based on the brand's design and branding, whether it is, for example, a luxury brand.

What exactly was the legal dispute about?

In the legal dispute, Adidas claimed that the jacket's design constituted an infringement of its trademark rights. Trademark protection was based on the common usage and recognition of the three stripes (according to §4 numbers 2 and 3 of the MarkenG).

Adidas based its trademark claim on the protection of reputation (§14 (2), sentence 1 number 3 of the MarkenG) and, essentially, on the existence of a likelihood of confusion (§14 (2) sentence 1, number 2 of the MarkenG).

Likelihood of Confusion in Trademark Law

§14 (2) sentence 1 number 2 of the MarkenG protects the trademark owner against confusion. Third parties without the trademark owner's consent are prohibited from „using a sign if it is identical with or similar to a trademark [...] and there is a likelihood of confusion on the part of the public, including the risk that the sign will be mentally associated with the trademark“.

For such a likelihood of confusion to exist, the sign must be used in an infringing manner by the third party „as trademark." It must be perceived by the relevant public in its function as an indicator of origin under trademark law.

According to established case law, this depends on whether the „essential function of guaranteeing consumers the origin of the goods [...]" is impaired by the third party's use.

Adidas argued that the three equally sized and wide, parallel stripes that wind horizontally around the sleeve of a garment possess a high degree of distinctiveness as a position mark. This design is precisely what is characteristic of Adidas and thus a clear sign of origin with regard to the identity of goods under trademark law (see §4 numbers 2 and 3 of the MarkenG).

By designing its jacket with four stripes on the upper arm, the luxury brand failed to maintain the „necessary distance" from its own position mark. The similarity between the signs was so high that it constituted a „trademark-like" use and thus a likelihood of confusion.

How did the court decide?

The LG Nürnberg-Fürth did not consider the use of the four stripes by the luxury brand Thom Browne to be a „trademark" use under trademark law. The decisive factor was whether „a not insignificant portion of the target public understands the contested design as an indication of origin to a specific company or merely as a decorative design element“.

The court explained that the only relevant factor in this regard was whether a significant portion of the target public understands the sign as an indication of a specific manufacturer. The standard to be applied was that of an average member of the relevant public.

The court decisively specified the assessment of the „relevant" public. In this case, it specifically focused on buyers of luxury goods from luxury brands such as Thom Browne. It also emphasized that consumers of high-priced luxury goods constitute a particularly informed, attentive, and brand-conscious public.

This public can clearly recognize, based on the visual design alone, that the four stripes of the luxury brand Thom Browne are not the three stripes of Adidas. When viewing and comparing the signs, a different overall impression emerges from the perspective of luxury brand buyers.

In particular, this specific public recognizes that the four stripes are purely design elements. It also recognizes that the pure design decision does not serve as an indication of the brand's origin under trademark law.

The court further explains that the luxury brand Thom Browne clearly identifies its products with its own branding, thus establishing a distinction from other brands for its luxury brand buyers. A clear, proprietary label „as Thom Browne" is recognizable both on the product labels, in representations on the website, and through other branding of the luxury brand.

The court thus ruled out any likelihood of confusion under trademark law.

Protection of reputation under trademark law

Adidas also relied on protection of reputation, as the three stripes enjoy a particularly high level of recognition among the public (§14 (2) number 3 of the MarkenG).

Protection of reputation under trademark law ensures the appreciation and distinctive character of certain trademarks, for example, in favor of luxury brands. The decisive factor is whether consumers mentally associate the well-known trademark with the third-party trademark, and whether the third-party trademark benefits from this.

In other words, the scope of protection of reputation is open when there is such a similarity between the signs that both signs are mentally linked, and the well-known trademark „comes to mind" when buyers consider the third-party trademark.

Therefore, third parties are prohibited under trademark law without consent from using „a sign identical to the trademark or a similar sign for goods [...] if the trademark is a well-known trademark in Germany and the use of the sign unfairly exploits or impairs the distinctive character or the repute of the well-known trademark without due cause."

Adidas assumed that the specific design of the Thom Browne jacket constituted an infringement. This was because „the necessary, but also sufficient, mental connection with the well-known trademark exists here."

How did the court decide?

With regard to the protection of reputation, the court ruled that Adidas' three stripes did not have sufficient distinctive character under trademark law and therefore no infringement was alleged. It referred to the industry practice of using horizontal stripes and simple visual design (see also OLG Düsseldorf, judgment of 28 May 2024, case no. 20 U 120/23, para. 117).

The court further emphasized that there was no „trademark-like" use by the luxury brand under trademark law, because „a particularly attentive and informed public can clearly recognize that the contested sign is not the plaintiff's trademarks." There was no impairment.

Résumé

In its judgment, the LG Nürnberg-Fürth specified the requirements for „trademark-like" use for luxury brand products. It emphasized that the assessment depends on the relevant public, i.e., the people who consume the products.

In the case of a luxury brand, the reference is usually to the public of luxury brand buyers of high-priced products. These people are particularly brand-conscious and informed and can, as in the present case, distinguish a purely decorative design decision from an indication of origin under trademark law.

dtb-lawyer and art law, trademark and luxury brands expert Leon van Lee comments: „The ruling provides significant clarification for assessing in the luxury sector whether a sign is being used „as a trademark“ and is therefore relevant under trademark law."

Status 19.06.2025