Lines of Contention: Trademark Disputes Shape the Future of Sports Branding

Introduction

The collision of luxury fashion and sports branding has reshaped the global apparel industry. As performance wear increasingly meets high-fashion designs, the boundaries between utility and aesthetics are dissolving and creating fertile ground for intellectual property (Hereinafter as “IP”) conflicts. This convergence has made the protection of visual brand identity, an issue of mounting commercial and legal significance.

Adidas–Thom Browne: The Takeaway

The judgment of Adidas AG v. Thom Browne Inc. epitomises this global trend as Adidas, who is popularly known by its “Three Stripes,” design, challenged Thom Browne’s “Four Bar” motif, alleging infringement after the latter expanded into the athleisure segment that overlaps with Adidas’s core market. The U.S. Federal jury, however, held that differences in design and price point diluted the likelihood of consumer confusion. Parallelly, the UK High Court cancelled some of Adidas’s stripe trademarks, showing how hard it is for brands to claim exclusive rights over simple or functional design elements across different countries.

While these rulings have reshaped the international debate on the limits of design exclusivity, India presents its own distinctive framework. With the rapid growth of domestic sports leagues and the expanding presence of global brands, Indian courts are now increasingly dealing with similar design and branding disputes, testing the extent to which visual elements can be protected under Indian trademark law.

Indian Legal Framework

To truly understand how the identity of sports brands is protected, it’s essential to first explore the legal foundation that governs brand distinctiveness in India. 

The Trade Marks Act, 1999 (TMA)

• Mark (Section 2(1)(m)): This term is broad, encompassing devices, brands, letters, numerals, shapes, packaging, and crucially, any combination of these.
• Trade Mark (Section 2(1)(zb)): This refers to a mark capable of being graphically represented and capable of distinguishing the goods or services of one person from those of others. This definition explicitly includes the shape of goods, their packaging, and combination of colours.

It is pertinent to note that the TMA does not explicitly codify “trade dress”, rather, it implicitly acknowledges these visual presentation elements, with the actual protection secured through the common law tort of Passing Off.

The Test for Deceptive Similarity (S.29(1)–(4))

Infringement under Section 29 generally requires the unauthorized use of a mark that is identical or deceptively similar to a registered mark.

• Section 29(2): Deals with infringement where the competing marks are similar and used for similar goods/services, requiring proof of a likelihood of public confusion.
• Section 29(4) (Dilution): Provides broader protection for marks with a reputation against use on dissimilar goods/services, where the infringer takes unfair advantage of or is detrimental to the distinctive character or repute of the registered mark.

Cadila Factors for Visual Similarity

The definitive multi-factor approach for assessing deceptive similarity in India was established by the Supreme Court in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001). While the case dealt primarily with pharmaceuticals, these factors apply universally to visual branding elements like stripes and devices:

1. Nature of the Marks: Courts look at how the marks look, sound, and the idea they give.
2. Degree of Resemblance: Weighing the structural similarities between the visual devices.
3. Character of the Goods and Trade Line: Considering whether the goods (e.g., luxury athleisure vs. mass-market performance wear) are sold through different channels.
4. Class of Purchasers: The court considers how careful the buyers are. People buying expensive luxury sportswear are less likely to get confused than people buying mass-market products.
5. Mode of Purchase and Surrounding Circumstances: Online purchases or quick buying decisions can make confusion more likely, while products that are carefully checked before buying are less risky.

Together, these factors form the foundation for evaluating visual similarity in branding disputes and ensuring that the protection extends not just to names or logos, but also to the broader identity that defines the market presence of a brand.

Protection Against Dilution: Well-Known Marks (s.2(1)(zg) and s.29(4))

Indian law also provides extra protection for famous sports logos such as the Nike’s “Swoosh” or Adidas’ “Three Stripes,” which are well-known across different types of products. Under Section 29(4) of the Trade Marks Act, these marks are protected even when someone uses them on unrelated or dissimilar goods, this is called as trademark dilution.

A Well-Known Mark, as defined under Section 2(1)(zg) of the Trade Marks Act, enjoys a broader scope of protection under Section 29(4). This means that even if the mark is used in a completely different industry, it cannot be exploited in a way that benefits the new user unfairly or damages the brand’s reputation. For instance, the Delhi High Court recognized “Tata” as a well-known mark and held that its use by Greenpeace in a public campaign could mislead the public or tarnish the brand’s image.

Remedies for Infringement

The Trade Marks Act, provides potent civil and criminal remedies:

Civil Remedies (Section 135): This section enables the court to grant immediate interlocutory or ex parte injunctions in urgent situations. These orders include the discovery of documents, preservation of infringing goods, and restraining the defendant from disposing of assets in order to secure recovery of damages.¹¹

Criminal Remedies (ss.103–105): For deliberate counterfeiting, Sections 103 and 104 provide for imprisonment of not less than six months (extendable up to three years) and fines of not less than fifty thousand rupees (extendable up to two lakh rupees).

Judicial Protection: Passing Off and Trade Dress

The overall visual appearance of sports and athleisure brands are known as its trade dress. It is a key way for consumers to identify the brand. This includes things like colour combinations, patterns, and the shape or design of the product.

In India, the Trade Marks Act does not specifically define trade dress. Instead, protection for such unregistered visual features comes from the common law principle of passing off.

To succeed in a passing off case, a brand must prove three main elements, often called as the “classical trinity”:

1. Goodwill or Reputation – The visual design (like a signature colour pattern or jersey style) has become linked in the public’s mind with that brand.
2. Misrepresentation – The other party’s similar design or packaging is likely to confuse consumers about the true source of the product.
3. Damage – The original brand suffers harm, or is likely to, because its reputation or sales are affected.

Indian courts have actively protected trade dress in several cases, for instance, in Cadbury India Ltd. v. Neeraj Food Products, the Delhi High Court ruled for Cadbury, finding that the defendant’s use of similar packaging, colours and overall design amounted to passing off.

Event IP & ambush marketing in India

Major sporting events such as the Indian Premier League (IPL) and the ICC Cricket World Cup operate within short commercial windows and involve exceptionally high financial stakes, which is why, the judicial responsiveness in enforcing intellectual property rights becomes critical.

Indian courts have developed the practice of granting ex parte injunctions against unidentified or unnamed defendants, such as counterfeit manufacturers or unauthorized broadcasters. These orders empower rights holders to undertake immediate enforcement actions that includes raids, seizure of infringing goods, or blocking of unauthorized content, without awaiting full identification of the infringers.

Practical Playbooks for IP Hygiene and Risk Mitigation

Trademark disputes lead to sweeping consequences that extend beyond the courtroom, impacting athletes and endorsement value making proactive strategy essential.

Playbook 1: IP Strategy for Brands and Clubs

IP management for sports entities must be defensive and comprehensive:

• Filing Strategy: Beyond registering core word marks and device marks (logos), proactive registration must include specific colour combinations and the overall visual appearance of the key product lines as composite marks to support future trade dress claims. Filings must cover all potentially relevant goods and services (e.g., apparel, merchandise, broadcasting services).
• Usage Guidelines and Policing: Rigorous IP usage guidelines must be enforced across all licensed merchandise to maintain the distinctiveness required for trademark validity.
• Enforcement Leverages: Utilize civil remedies (s.135) for swift injunctions and initiate Customs/Border Measures by filing a Notice with the Indian Customs authorities to allow proactive seizure of suspected infringing shipments before they enter the market.

Dual ownership and overlapping endorsements can create subtle brand conflicts. For instance, Sanjeev Goenka, who is the owner of Lucknow Super Giants (LSG), also owns the snacking brand Too Yumm, which is endorsed by Virat Kohli, who captains rival IPL team Royal Challengers Bangalore (RCB). Such overlaps highlight how intertwined business, branding, and sport can become. It requiring clear trademark licensing boundaries and brand-neutral endorsement policies to avoid implied affiliations or ambush perceptions.

Playbook 2: Contractual Safeguards for Athletes and Agents

Athletes’ personal brands are deeply connected to the organizations they represent. To avoid reputational or legal fallout from IP disputes, contracts must include:

• IP Indemnification: The sponsoring brand should defend and hold the athlete harmless against any third-party IP claims (e.g., design or logo infringement).
• IP Representations and Warranties: The athlete assures that their own IP contributions (likeness, signatures, slogans) do not violate any other party’s rights.
• Morals and IP Compliance Suspension: Specifies the athlete’s right to suspend or exit a deal if the brand becomes involved in prolonged IP or counterfeiting litigation that could harm the athlete’s image.

When Maria Sharapova faced a doping ban in 2016, several brands, including Nike, temporarily withdrew sponsorships to protect their image. This underscores the importance of morals and termination clauses that allow quick response to crises affecting brand reputation.
Conclusion

The convergence of athleisure and luxury fashion, highlighted by the Adidas v. Thom Browne case, confirms that the protection of IP in the sports sector demands both clarity and precision in trademark registration. The Indian legal landscape, anchored by the Trade Marks Act and supported by judicial doctrines on passing off and dilution provides the necessary enforcement tools.

The sports entities must ensure meticulous registration across all visual assets and secure well-known Mark status for core identifiers. Simultaneously, agents must fortify athlete endorsement contracts with IP indemnification and reputation-shielding clauses. As major sporting events line-up, trademarks will continue to serve not just as commercial identifiers, but as fundamental legal instruments preserving fair competition and integrity in the global sports industry.