In allowing an appeal against the dismissal of a claim for trade mark infringement, the Court of Appeal has highlighted the importance of considering post-sale confusion and how the potentially infringing sign might be seen by the average consumer in the real world.
The court found that the judge had erred in finding no likelihood of confusion between Dream Pairs' tilted square sign and Umbro's trade mark for its famous "double diamond" logo.
Dream Pairs' sign:
Umbro's trade mark:
The Umbro brand is owned by Iconix Luxembourg Holdings SARL ("Iconix") and the "double diamond" logo has been used for sportswear in the UK since at least 1973 and on footwear since 1987, in particular on football boots. Professional footballers including Alan Shearer and Michael Owen have worn boots bearing the Umbro marks.
Iconix asserted that the use of Dream Pairs' sign for footwear, including football boots, infringed its trade mark under sections 10(2) and 10(3) of the Trade Marks Act 1994.
The High Court dismissed Iconix's claim.
At first instance, it was acknowledged that Umbro's marks had acquired significant reputation and a high degree of distinctive character, which would usually lean towards finding a greater likelihood of confusion amongst the general public. However, the judge took the view that the visual similarities between the Umbro marks and the DP logo were "very faint indeed" and also considered it relevant that Dream Pairs' products would be advertised under the name "Dream Pairs" which was different to the "Umbro" brand name used to advertise products bearing the Umbro marks.
It is important to note that Dream Pairs' tilted square sign appears less crisp when affixed to footwear, as can be seen below:
The High Court concluded that there was no likelihood of confusion even when Dream pairs' sign was viewed at an angle rather than square on, or the impression that the Dream pairs' sign might have on someone who saw it for the first time on a pair of football boots in a post-sale real-world context.
Unlike the High Court, the Court of Appeal took account of how the potentially infringing sign might be seen in practice in its consideration of post-sale confusion, and held that the average consumer in the real world would most likely encounter Dream pairs' sign by seeing it on football boots worn by someone else rather than seeing it represented graphically on the trade mark register. Further, in the real world, the average consumer might only see Dream Pairs' logo when looking down and, therefore, at an angle, meaning that the tilted square sign would appear foreshortened and it would appear even more foreshortened on a muddy football boot.
At first instance, Iconix had submitted that the court should consider how shoes with the DP sign would look to other consumers in realistically likely situations, relied on an image where a boot was muddy and argued that this approach was permissible because football boots might well be seen on the pitch or the changing rooms covered in mud. Although the judge saw the force of that argument in principle, he erred by going on to state that the claimant has to show that it is the use of the sign (rather than the shape of the boot or anything else) which leads to the relevant confusion and that a significant proportion of the public (having the characteristics of the average consumer) would not see the DP sign, even when muddy, as more than very faintly similar to the Umbro marks.
In overturning the High Court's decision, the Court of Appeal has highlighted the importance of applying real-world practice when considering post-sale confusion.
This decision illustrates that all relevant circumstances must be taken into account when assessing likelihood of confusion, including post-sale confusion and use.
Case citation: Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc & Anor [2024] EWCA Civ 29 (26 January 2024)
Our full article on this case will appear in Entertainment Law Review.
Originally published 8 February 2024
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
