Australian legal outlets Lawyerly and Australasian Lawyer report that Adidas Australia and a second applicant filed trade mark infringement proceedings against the local fashion brand White Fox Boutique in the Federal Court of Australia on 21 September, the matter being logged as Adidas Australia & Anor v White Fox. Adidas and its solicitors Mallesons declined to comment and the pleadings are not yet public; the Australian Financial Review reads the case as most likely challenging stripe motifs on some White Fox designs that resemble the Adidas three-stripe mark, while Trademark Lawyer Magazine cautions that the registrations relied on, the products and conduct alleged and the relief sought can only be confirmed once the court documents are available. White Fox is an Australian online fashion retailer founded in 2013, aimed at teenagers and young women and selling into several countries.
The case is at the filing stage only, with no substantive decision from the court, so it cannot be read as Australia having widened or narrowed the protection of stripe marks.
Adidas has litigated stripes in Australia before: in Adidas AG v Pacific Brands Footwear in 2013 the Federal Court found some of the respondent's four-stripe shoes infringing and others not, showing that the outcome turns on the number, position and overall presentation of the stripes; in the United States, Adidas lost its 2023 four-stripe case against the designer brand Thom Browne.
What makes such cases worth watching is the boundary between non-traditional graphic elements, garment decoration and source identification: stripes are ordinary decoration and fall within trade mark law only when consumers take them as a badge of origin, and since Adidas holds several position mark registrations for its three stripes in Australia the dispute usually turns on whether the respondent's stripes are used as a trade mark and whether they are deceptively similar.
J&C recommends that brands selling apparel or footwear in Australia include stripes and other decorative elements in pre-launch trade mark clearance: check whether the number, spacing and position of stripes come close to registered position or device marks, keep records of the design's origin and decorative purpose, and where necessary make the source clear with the brand's own mark or labelling so the stripes are less likely to be treated as use as a trade mark; owners of non-traditional device marks can follow how this case draws the line between decoration and badge of origin.
Source: www.thelawyermag.com | trademarklawyermagazine.com
