In Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and Top Glory Trading Group Inc [2024] EWCA Civ 29, the Court of Appeal considered the proper approach when assessing potential infringement under section 10(2) of the Trade Marks Act, which requires the two marks and products to be at least similar, and also that there is a “likelihood of confusion” on the part of relevant consumers. While the likelihood of confusion is usually assessed at the point of sale, courts have been willing to extend trade mark owners’ rights to encompass confusion which occurs post-sale. In this case the Court of Appeal emphasised the importance of the “real-world” context of how the marks would appear affixed to the relevant products and potentially viewed from different angles, and took into account how a consumer might actually view the respective marks post-sale.

The background

The Claimant owns the well-known sportswear brand Umbro, including its famous double-diamond trade marks, amongst which are two devices registered under Trade Mark Number 991668 (below left) in Class 25 (“articles of clothing for use in sports, athletics and gymnastics”) and another device under Number 903266459 in Class 25 (inter alia, “articles of clothing, footwear and headgear”) (below right).

We shall refer to these, as the judgments do, as “668” and “459” respectively and, together, the “Marks”. 

The Defendants own a registered mark (being the logo of the brand “Dream Pairs”), which was used with and without the “DREAM PAIRS” wording underneath (the “Sign”).

The Umbro brand is particularly well known, as stated in Miles J’s judgment, in relation to football kits and football boots, with the English national team and many English professional clubs wearing Umbro kits regularly over the past few decades. Umbro was found to have a substantial reputation in relation to this particular gear, with a lesser reputation for other sportswear.

It was noted by the Court of Appeal that the sales of goods bearing the Marks, in particular football kit and boots, had a value of more than $60 million in each of the years 2016-2018, whereas Dream Pairs, who had been selling footwear under the Sign since February 2019, had had moderate sales in the UK.

The decision below

The Claimant brought trade mark infringement claims against the Defendants on the basis of sections 10(2)(b) and 10(3) of the Trade Marks Act 1994 (the “Act”). Miles J gave a detailed summary of the factual background to the case, in addition to a precis of the relevant legislation and case law in relation to the Claimant’s claims. 

The judge ran through the six requirements for a section 10(2)(b) claim, on the basis of Sky v Skykick [2018] EWHC 155 (Ch); of those six, the only ones disputed here were whether the sign was at least similar to the trade mark and if there was a likelihood of confusion on the part of the public. 

In respect of the similarity of the marks, one of the Claimant’s key submissions was that the Sign was not always viewed straight on, particularly on football boots; in some of the shoes shown in picture evidence, the Sign viewed on an angle would foreshorten it, making it look more like the elongated double diamonds of the Marks. They argued that, viewed in this context, there was likelihood of confusion among a significant portion of the public as the marks were highly similar to begin with. Though this would later prove to be the kicker (pardon the pun) for the Defendants’ case in the appeal, the judge below did not agree. Miles J found enough variances between the two marks, even with the comparable rhomboid shape, angle and the concentric dominant elements, stating they only had a “very faint” degree of similarity.

He did not think there could be actual confusion; his comments on the post-sale context are more relevant to the appeal, in which he said, “The claimant relies on an image where a boot was muddy and argues that this approach is permissible because football boots might well be seen on the pitch or the changing rooms covered in mud. I see the force of this argument in principle. However it must be remembered 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. I do not consider that a significant proportion of the public (having the characteristics of the average consumer) would see the DP logo, even when muddy, as more than very faintly similar to the Marks.” [162]

The section 10(3) claim was also rejected, with the judge stating that he was not satisfied that the use of the Sign would give rise to a link to the Marks in the mind of the average consumer, with the “very faint similarity” not being outweighed by other factors considered. He also found no evidence of any injury to the Claimant. 

The appeal

The Claimant’s principal argument on appeal was that Miles J had erred in principle in his assessment of the likelihood of post-sale confusion, particularly in relation to the 668 mark. There were related grounds of appeal related to his assessment of similarity between the marks. 

Lord Justice Arnold, giving the main judgment, dealt with the findings as to similarity first. The Claimant had submitted that the “P-like form” in the middle of the Sign should not have been deemed to be the “distinctive and dominant element” of the Sign. It was an error of principle because the Sign should have been regarded as a whole and led to an “undue focus” on the differences. They also described Miles J’s conclusion that the similarity was only very faint to be “rationally insupportable”. Lord Justice Arnold agreed, though did say he was unsure as to whether it would have been a sufficiently material error on its own. The Court was also persuaded on the second point, though only in relation to the 668 mark, both when viewed straight on and even more so when viewed on an angle. As a note, he did find it to be rationally supportable only when the 459 and 668 marks and the Sign were considered as graphic images. 

On the principal point of appeal, the Claimant had submitted that the judge below had erred in two ways in relation to the post-sale context. Firstly, he had failed to consider the impact of the Sign on consumers who had never seen it before, i.e. outside of a side-by-side comparison. Secondly, he also failed to consider the fact that the Sign would be seen frequently at an angle and not square on, given that it was most regularly affixed to footwear. 

The Court of Appeal agreed. Arnold LJ said that the average consumer encountering the Sign on football boots for the first time would not know what the Sign looked like graphically, nor, potentially, ever find out exactly what it looks like square-on. Looking down at a boot, there is a real chance of the Sign becoming foreshortened, which would make it appear more like a double diamond. Notably, Arnold LJ commented, “There is nothing artificial or unrealistic about this comparison.” Therefore, in reconsidering the likelihood of confusion, the Court of Appeal found there to be a moderate level of similarity between the 668 mark and the Sign, particularly when “imperfect recollection” is allowed for. Therefore, there was a likelihood of confusion and the Defendants were found to have infringed the 668 mark (and there was no need to decide on the 459 mark).

What does this mean?

The Court of Appeal decision will be welcomed by trade mark owners, as it reiterates the principle that judges will need to take into account the real-world and post-sale context when assessing likelihood of confusion in infringement actions under section 10(2) of the Trade Marks Act. This approach to assessing the likelihood of confusion has the potential to broaden the scope of trade mark protection. Similarly, the possibility of post-sale confusion should be considered when clearing new brands and assessing infringement risks.