When is a stripe not a stripe? According to sportswear brand Adidas, when it's part of its trademark.
The global sportswear giant is suing Australian online fashion retailer White Fox Boutique for selling items allegedly "deceptively similar" to its iconic three-stripe logo, in a case experts say could test the trademark's registration.
The German-based brand has filed a trademark infringement claim against the Sydney-based company, popular with teenagers, in the Federal Court of Australia.
According to court documents, Adidas accuse White Fox of replicating its trademark across multiple items of clothing and advertising content that feature four parallel stripes of equal width in a colour contrasting with the colour of the clothing.
Adidas claim this design is "deceptively similar" to its three-stripe trademark which it has used in Australia for more than 65 years and globally for more than 75 years.
White Fox is defending the case, which will play out in court hearings next year.
A White Fox Boutique advertisement seen on the back of a bus. (Supplied)
According to the documents, White Fox Boutique has promoted and supplied articles of clothing with four parallel stripes on them since March this year, including advertisements on buses, bus stops and on social media.
Adidas said it asked White Fox to remove the garments from sale in March, and to stop using the four-stripe design, which White Fox declined to do.
Adidas further claimed White Fox had used genuine Adidas shoes, in the same colours as its clothing, in some promotional material, which it said took advantage of the brand's reputation and may lead consumers to draw an association between the two companies.
An Instagram post advertising a White Fox Boutique outfit paired with genuine Adidas shoes. (Supplied)
It alleges the actions of White Fox are likely to cause damage to its reputation.
In court on Friday, White Fox's barrister Ed Heerey KC said the online fashion retailer would argue the four stripes emblazoned on the label's clothing were simply decorative rather than a trademark.
He highlighted similar items bearing the four stripes from other brands including fast-fashion labels Princess Polly, Glassons, and Shein.
Intellectual property law expert Muhammad Abbas said this case was not just about a fourth stripe.
"Adding a stripe is neither a complete answer to a trademark claim nor automatically an infringement," Dr Abbas, a lecturer at the Queensland University of Technology, said.
He explained a 2023 High court decision considered the impression a notional buyer, "allowing for imperfect recollection", would have of the registered trade mark, compared to the impression created by the sign used.
"Counting stripes is only the start,"
he said.
Adidas trademark at risk
The three-stripe design dates back to the brand's foundation in 1949 but wasn't trademarked until 1952 after Adidas discovered a Finnish brand Karhu had come up with the same logo and trademarked it.
Founder Adolf Dassler struck a deal, and traded two bottles of whiskey and the equivalent of 1600 euros for the logo, which it has been extensively protective of ever since.
In 2013, it successfully sued Pacific Brands over its use of a four-stripe design on some of its Dunlop and Grosby shoe designs, with the court ruling that three of the 12 designs in question were "deceptively similar".
However, senior lecturer at the University of Technology Sydney School of Law, Sarah Hook, said challenges overseas had led to Adidas losing its trademark registration in some jurisdictions.
In the US, Adidas unsuccessfully took high-end designer Thom Browne to court over a four-stripe design.
Designer Thom Browne wore socks with the four-stripe design to court in New York. (Reuters: Eduardo Munoz)
Thom Browne then challenged the trademark registration in the UK which ultimately saw the High Court rule the trademark was invalid.
"That's because the court said that the trademark itself wasn't very clear and distinct about what it would cover and which variations it would cover,"
Dr Hook said.
Director of Intellectual Property Law studies at the University of Melbourne, Benjamin Hopper, said distinctiveness was a core doctrine of trademark law, meaning it has to be distinguishable from other goods or services from other traders in the same marketplace.
"For example, if I owned a company that sold chairs, armchairs, lounge chairs, dining room chairs, office chairs, theatre chairs, it was just chairs and I called it the chair company or I called it chairs and I said, 'I want to get a trademark for chairs,' it would just completely not be distinctive because the word chair has zero capacity to distinguish my chair in the marketplace from the chairs of other traders," he said.
"The argument here is that, three-stripe, the clothing is just so simple and just not unique that if other traders wanted to adopt that to brand or distinguish their own clothes, they should be able to because it's just so simple, like a circle or a triangle."
Was it a deliberate act?
The court case could test the limits of Adidas's trademark. (Supplied)
Dr Hook noted in Australia, Adidas's trademark stated a single or two stripe design would not infringe.
"The fact that [White Fox have] done four stripes seems deliberate because it seems like they've looked at what [Adidas] are covering in the monopoly in the trademark, which is the three stripes, and thinking, 'well, let's have a look at four stripes'," she said.
"So maybe this is testing the limits of that."
Dr Hopper speculated White Fox may have used the four-stripe design for several reasons.
"One, it was a deliberate act to garner sort of PR.
"Two, they had advice that this is fine; it's not going to be trademark infringement or passing off or breach of the Australian Consumer Law, or they think that there's a pretty good case to be made.
"Thirdly, they had advice that maybe they could revoke the trademarks on which Adidas has sued them."
The case has been set down for a hearing in early 2027.
Adidas and White Fox Boutique have been contacted for comment.
ABC/AAP