Different views mean Umbro’s trade mark claims fail

The Supreme Court has now delivered its judgment in Iconix Luxembourg Holdings SARL -v- Dream Pairs Europe Inc and another. It allowed the defendants’ appeal on the basis that the Court of Appeal did not have sufficient grounds to override the decision of the first instance judge. At the same time, the Supreme Court provided important guidance on the concept of post-sale confusion and how this is to be assessed in trade mark infringement claims.  

Background

The case involved logos on footwear. The Claimant (“Iconix”), owns the Umbro brand which has been used on football boots since the 1980s. Iconix relied on two trade marks (“the Trade Marks”) primarily the 668 Mark below:

The defendants, Dream Pairs and Top Glory (“Dream Pairs”), had been selling a variety of footwear in the UK since 2018 using this logo (“the Sign”):

The first instance view

Iconix brought claims against Dream Pairs for infringement of trade marks under Section 10(2) and/or Section 10(3) of the Trade Marks Act 1994. By way of reminder, Section 10(2)(b) provides that a registered trade mark is infringed if the defendant uses in the course of trade a sign where because the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public. For reasons explained below, nothing turned on the detail of the Section 10(3) claim.

In March 2023, Iconix’s claim failed at first instance in the High Court. The judge decided that there was a very low level of similarity between the Trade Marks and the Sign, and there was no likelihood of confusion between them in the mind of the average consumer and so the Section 10(2) claim failed. The Section 10(3) claim also failed.

The Court of Appeal view

However, the Court of Appeal overturned the first instance judge’s decision. Its view was that the judge should have decided that there was a moderately high level of similarity between the Trade Marks and the Sign when these were instead considered from different angles rather than side-by-side. This would particularly be the case in the post-sale situation where a viewer would be looking from above at the relevant footwear worn by someone else (agreed by the parties as the most common angle from which the Sign would be seen post-sale). From that viewpoint, the Court of Appeal said that the tilted square shape of the Sign would look much more similar to the diamond shape of the Trade Marks. Having reached that assessment on similarity, the Court of Appeal then re-considered the question of confusion and decided that in light of its own assessment, there was a likelihood of confusion between the Sign and the Trade Marks on the part of a significant proportion of consumers. This meant that Iconix’s claim for trade mark infringement succeeded on Sections 10(2) and 10(3) (the parties having agreed that if there was a likelihood of confusion under Section 10(2) then there would be detriment to the distinctive character of the Trade Marks under Section 10(3)).

The Supreme Court assessment

On a further appeal, the Supreme Court restored the first instance judge’s decision that there was no trade mark infringement. They said the first instance judge had applied the right test. He had considered the question of similarity not only from a side-by-side comparison but also by reference to viewing the Sign from different angles. In doing so, his decision that there was a very low level of similarity between the Trade Marks and the Sign could not be criticised. As he had found some similarity, the first instance judge had then gone on to consider whether there was any likelihood of confusion. Again, his view that there was no such likelihood could not be criticised. The Supreme Court emphasised that it was not enough for the Court of Appeal to form the view that it would have reached a different decision on the facts to that of the High Court Judge. The only basis on which the Court of Appeal could have interfered was if there had been an error of principle or law on the part of the judge or an irrational decision based on those principles or the law. There was none.

However, the Supreme Court also helpfully gave guidance on post-sale confusion (and in doing so dismissed the other grounds of appeal raised by the defendants). In particular, the Supreme Court dealt with two principal arguments raised by the defendants which it called the “Similarity Issue” and the “Confusion Issue”.

On the Similarity Issue the defendants said that the court should first view the Trade Marks and the Sign side-by-side. The defendants argued that only if the court finds there is some similarity on that basis should it go on to consider how the Sign might be perceived from different angles by a viewer in the post-sale context (eg in this case on a street or on a football pitch) when making the assessment of the likelihood of confusion and adjusting as necessary the assessment of similarity. The defendants sought to persuade the Supreme Court that the Court of Appeal had therefore been wrong at the outset to make an assessment of similarity by reference to the different angles from which the Sign could be viewed.

The Supreme Court rejected this argument for two main reasons. First because there was no support in prior case law for this proposition. Instead, the Supreme Court said that it is legitimate to consider the post-sale context in which the Sign is viewed to establish issues of similarity. Secondly, the first instance judge had in fact found that a side-by-side comparison indicated some similarity even though this was assessed as “faint”. Therefore, even on the defendants’ argument, the judge had been right to go on to consider the different angles at which the Sign might be viewed in forming his overall conclusion (and so, by extension, had the Court of Appeal).

This part of the ruling makes it more difficult to assess similarity because it is clear that it is not a straightforward side-by-side comparison. How brands typically appear when viewed in an after sales context needs to be considered as well.

On the Confusion Issue, the defendants argued that the assessment of post-sale confusion should be restricted to a situation where the relevant public are entering into a transaction for the goods or services in question, whether that involves a subsequent sale or other transaction (eg a situation in which an NHS patient is choosing a product or service though not paying for it). They justified this on the basis that the post-sale confusion must affect or jeopardise the essential function of a trade mark as a guarantee of origin.     

The Supreme Court also rejected this argument. Amongst other grounds, it was not supported by any prior case law. On the contrary, the Supreme Court pointed out that post-sale confusion regarding origin has been held to arise in contexts where no subsequent sale or transaction was being contemplated by the relevant public. In addition, the suggestion made by the defendants was inconsistent with the examples of infringing use provided for in Section 10(4) of the Trade Marks Act which are much wider than simply sales or other transactions.

The Supreme Court agreed with the Court of Appeal that even where there is no likelihood of confusion at the point of initial sale there can be in the post-sale environment. This confirmation will make it easier for brand owners to rely on post-sale confusion.

This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Farrer & Co LLP, June 2025