Case background
Iconix Brand Group (Iconix), owner of the renowned sportswear brand Umbro, initiated legal proceedings against Dream Pairs Europe Inc ("Dream Pair") and Top Glory Trading Group Inc, alleging infringement of its registered trademarks protecting the distinctive double-diamond Umbro brand used on footwear since the 1980s.
The allegation centred on the stylised logo design featured on Dream Pairs’ footwear comprising the letters D and P in a nested square. The judgement and logos can be viewed here.
At first instance, Mr Justice Miles in the High Court dismissed Iconix's claim, finding that the marks shared only a "faint similarity". He concluded that there was no likelihood of confusion between them in the mind of the average consumer. These findings were based on a global assessment of the marks, as they would be encountered in real-world conditions, and consideration of whether this would give rise to post-sales confusion. Iconix appealed the decision.
The Court of Appeal disagreed with the High Court's assessment, overturning the decision. Lord Justice Arnold delivered the leading judgment and found the High Court's assessment of similarity to be “rationally insupportable”. The Court conducted its own assessment of the similarity of the marks and concluded that the marks shared a "moderately high level" of visual similarity, particularly when viewed from different angles (rather than side by side), as they would be in a post-sales context. He emphasised that when viewed in real-world conditions (such as from above when looking down on footwear worn by someone else), the similarity was more pronounced. The Court of Appeal went on to reconsider the question of confusion and decided that there was a likelihood of confusion between the marks amongst a significant proportion of consumers.
Dream Pairs appealed to the Supreme Court, who considered the following issues relevant to trademark infringement under section 10(2) of the Trade Marks Act 1994:
- what is the correct approach to assessing visual similarity between trademarks?
- how should post-sales confusion be treated in trademark infringement claims?
- to what extent can appellate courts interfere with factual findings made by trial judges on similarity and confusion?
The supreme court judgment
Assessing similarity
The Supreme Court held that when assessing whether marks are similar, and if so the degree of similarity, "realistic and representative post-sale circumstances" can be taken into account. Similarity can be assessed on how the marks appear in the real world, including the angle at which a sign would typically be viewed in the post-sales environment. The real-world context must however be realistic and representative and not speculative or uncommon.
Post-sales confusion
The Court also confirmed that post-sales confusion is relevant when assessing trademark infringement. It agreed with the Court of Appeal, that even if there is no likelihood of confusion at the point of sale, the use of a sign can give rise to a likelihood of confusion in the post-sales environment. In doing so, it rejected Dream Pair's argument that the assessment of post sales confusion should be restricted to when the relevant public are entering into a sale or transaction for the goods or services in questions.
Interference with factual findings by a trial judge
Despite the Supreme Court agreeing with the Court of Appeal's legal reasoning on both the similarity and confusion issue, it went on to restore the High Court's decision finding that there was no trademark infringement. It held that the first instance judge had applied the right test, by considering the similarity of the marks from different angles. Therefore, its decision that there was a low level of similarity and that there was no likelihood of confusion could not be criticised. The Supreme Court found no error in the trial judge's finding that would justify an appeal. It criticised the Court of Appeal for substituting its own assessment of similarity and confusion for that of the trial judge, and reaffirmed that the appellate courts should not interfere in factual findings unless they are clearly wrong or irrational.Key takeaways from the judgment
The judgment offers several important clarifications on how courts approach trademark infringement, particularly in relation to post-sale confusion:
- courts may consider post-sales scenarios when assessing the existence and degree of trademark similarity, as long as those scenarios reflect typical consumer experience. Even marks that appear different side by side may be seen as similar in real world use;
- post-sales confusion alone can constitute trademark infringement, even if no confusion arises at the point of purchase; and
- appellate courts should only overturn the trial judge's findings on similarity and likelihood of confusion if they are clearly wrong or irrational – not simply because they would have decided differently.
Implications for businesses
The Supreme Court's decision provides valuable guidance for businesses navigating trademark enforcement claims in the UK:
- Real-world use matters: The courts will assess trademark similarity in infringement claims based on how consumers actually see and experience products in use. It is important to focus on how marks appears in real life – not just in side-by-side comparisons.
- Post-sales confusion: the Supreme Court has confirmed that even if there is no likelihood of confusion at the point of sale, there can be in the post-sale environment. When asserting post-sales confusion in infringement claims, brand owners must ensure that they provide the court with evidence covering all realistic and representative contexts in which the marks are experienced in everyday use.
- Brand clearances: It is important to consider post-sales confusion in brand clearance processes. A low degree of similarity in a side-by-side comparison does not necessarily equate to a low risk of infringement. The manner in which the brand will be used and experienced in real-world scenarios could increase the likelihood of confusion and risk of infringement.
- Legal strategy and enforcement: The strongest evidence and arguments should be presented before the trial judge. The appellate courts will only overturn a first instance judge's findings on similarity and likelihood of confusion if they are plainly wrong, even if they may disagree with them.
This article was co-authored by Gabriella Rasiah.
