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Iconix, the owner of the well-known sportswear brand Umbro, brought a trade mark infringement claim under sections 10(2) and 10(3) of the Trade Marks Act 1994 in relation to their Umbro double diamond logo trade marks (registered for, among other things, “articles of clothing for use in sports” and “footwear and headgear”) against Dream Pairs in respect of its logo. Comparison images of the Umbro double diamond marks and Dream Pairs logo are included below (Iconix also sought to invalidate two of Dream Pairs’ UK registered trade marks):
Iconix Umbro trade marks: the “668” mark
Iconix Umbro trade marks: the “449” mark
Dream Pairs logo
At first instance, Mr Justice Miles held that Dream Pairs’ logo did not infringe Umbro’s trade marks. In assessing the overall similarity between the marks/signs in question, the judge (applying the perspective of the average consumer) found the Umbro trade marks and Dream Pairs logo to have, at most, a very low degree of similarity (noting that he did not think that there was absolutely no similarity at all).
When considering the likelihood of confusion, the judge placed an emphasis on the purchasing journey that a consumer will go through when purchasing a pair of Dream Pairs shoes (mostly sold via Amazon as opposed to in brick-and-mortar shops). The judge noted that when purchasing the shoes, a customer would have been exposed to numerous photos of such shoes as well as accompanying text identifying the seller as Dream Pairs. The judge concluded that this militated against confusion. The judge also concluded that the Dream Pairs logo would not give rise to a link between it and the Umbro trade marks in the mind of the average consumer.
Iconix appealed the first instance decision that there was no infringement on multiple grounds (several of which were not pursued in oral arguments). Their principal argument for appeal was that the judge at first instance had failed to correctly assess the likelihood of post-sale confusion (two related grounds in relation to the judge’s assessment of similarity were also pursued).
The Court of Appeal took the two grounds relating to the judge’s assessment of similarity first finding that:
the judge had fallen into error when submitting that the “P-like form” in the middle of the Dream Pairs logo was the “distinctive and dominant element”. This was found to be an error as the Dream Pairs logo is not a composite sign consisting of different distinct elements but is rather a single sign that the court should have considered as a whole (without excision or distortion). This was found to lead to an undue amount of focus being placed upon what was different in the Dream Pairs logo when compared to Iconix’s trade marks.
the judge’s conclusion that the similarities between the 668 mark and Dream Pairs’ Logo when affixed to footwear and viewed from square-on (as well as from other angles) were “very faint indeed” was not rationally supportable. The Court of Appeal found that when the 668 mark and Dream Pairs’ logo were affixed to footwear and viewed from angles other than square-on there was plainly a higher degree of similarity.
The Court of Appeal then turned to Iconix’s principal ground of appeal, namely, that the judge at first instance had erred in principle in his consideration of post-sale confusion in two ways:
that he had “fallen into the common trap” of performing a side-by-side comparison of Iconix’s trade marks and Dream Pairs’ logo as graphic images; and
that he had failed to take into account the manner in which a viewer would see Dream Pairs’ logo in practice (i.e. looking down from head height at the feet of another person wearing footwear). As such, a viewer would more frequently see Dream Pairs’ logo from an angle rather than from square-on.
The Court of Appeal agreed that the judge at first instance did fall into error in respect of the above, agreeing that the average consumer in the real world would likely encounter Dream Pairs’ logo by seeing it on football boots worn by another person (rather than represented graphically as shown on the trade mark register).
The Court of Appeal found that the appearance of Dream Pairs’ logo, when viewed in the real world, would likely appear foreshortened and that consumers may not even view it from side on but may rather view it from the front or the rear. The Court concluded that such an analysis (i.e. that of how Dream Pairs’ logo may be seen in practice) was a realistic and representative scenario of how its use may have an impact on the perceptions of the relevant consumer.
The Court therefore allowed the appeal finding that there was a likelihood of confusion and that Dream Pairs’ logo infringed upon the 668 mark (the Court ruled that it was unnecessary to consider infringement of the 449 mark).
This decision will likely be welcomed by trade mark owners. The Court of Appeal’s ruling that real world practice applies when considering post-sale confusion has potential to broaden the scope of protection afforded when considering likelihood of confusion against the context of infringement.
If you’re looking to protect your intellectual property or brand in light of this recent Court of Appeal ruling, don’t hesitate to get in touch with any of our experienced Litigation and Trade Mark Attorneys. AA Thornton offers comprehensive IP services – schedule a consultation to explore your options.
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