It is rare to have one Supreme Court decision concerning trade mark law, but to have two in just over 6 months is extraordinary! The Supreme Court yesterday handed down its judgment in Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc & Anor.
This decision addresses the relevance of ‘post-sale confusion’ in assessing the similarity of trade marks and the risk of confusion in relation to infringement claims in the UK. The Supreme Court in this recent decision has overturned the ruling of the Court of Appeal issued in January 2024 and has reinstated the decision of the first instance court.
This decision reaffirms the relevance of post-sale confusion and confirms that realistic post-sale circumstances, such as how the goods/services are marketed or perceived, can be taken into account when assessing the similarity between trade marks. However, it is the Supreme Court’s conclusion that the decision of the Court of Appeal to substitute their assessment as to similarity and confusion, with those of the High Court judge, were not justified. As a result, Dream Pairs’ appeal was allowed, and the decision of the High Court judge that there was no likelihood of confusion, and therefore no infringement, prevails.
Background to the appeal
High Court
Iconix is the owner of the well-known sports brand UMBRO and is the owner of the following UK-registered trade marks (“the UMBRO Marks”):
It was established that the UMBRO Marks had been used extensively on football boots in the UK since 1987.
On the other side, Dream Pairs sell a wide variety of footwear in multiple countries under the below trade mark (“the DP Sign”):
The DP Sign was designed and created in 2015, but sales of footwear bearing the DP Sign through online platforms such as Amazon and eBay only commenced in the UK in 2018. The below image provides an example as to how the DP Sign appeared on footwear:
Iconix took issue with such use and issued trade mark infringement proceedings in the High Court on the basis of a likelihood of confusion. Unfortunately for Iconix, the claim was dismissed as the High Court found that there was “…at most a very low degree of similarity” between the UMBRO Marks and the DP Sign. As a result, there was no likelihood of confusion.
Court of Appeal
Dissatisfied with this outcome, Iconix appealed to the Court of Appeal and following a fresh assessment of the similarity of marks, the Court of Appeal overturned the High Court’s ruling.
The Court of Appeal instead concluded that there was a “moderately high degree of similarity” between the UMBRO Marks and the DP Sign, especially when the marks were examined in a post-sale context. For example, when the footwear is being worn by a football player during a game and the marks are viewed from above/at an angle that is not side by side.
In support of their conclusion, the Court of Appeal ruled that:
- The judge at first instance was irrational to conclude that the degree of similarity between the UMBRO Marks and the DP Sign was low when considering the DP Sign from any angle other than square on;
- The judge at first instance erred in principle by being unduly swayed by a side-by-side comparison of the UMBRO Marks and the DP Sign; and that
- The judge at first instance erred in principle by failing to appreciate that, in a post-sale context, the average consumer would be viewing the DP Sign from above (or any other angle) that is not sideways-on, as would be the case at the point of sale.
All of the above led to the finding that due to the similarity between the marks (in a post-sale context), and the overlap in goods, there was a likelihood of confusion on the part of the relevant public. As a result, Iconix’s appeal was successful.
Decision
Iconix however did not have long to soak in their success and an appeal was filed by Dream Pairs in March 2024. Dream Pairs’ appeal challenged the Court of Appeal’s findings in relation to the ‘irrational’ nature of the first instance decision. They also alleged that the Court of Appeal made significant errors in law in their approach to the similarity assessment.
In the decision handed down yesterday, the Supreme Court sided with Dream Pairs and allowed the appeal. Whilst Dream Pairs were ultimately successful in the outcome of the appeal, the Supreme Court did reject their arguments that post-sale factors should not be relevant and instead confirmed that realistic post-sale circumstances (such as those discussed by the Court of Appeal) may be taken into account when assessing similarity in trade mark infringement claims.
The Supreme Court did however, conclude that the Court of Appeal were not justified in substituting its own views regarding similarity and confusion for those of the first instance trial judge. Despite the claims of the Court of Appeal, the Supreme Court judges could not find any ‘irrationality’ to the trial judge’s conclusion. It was not, and is not enough, that the Court of Appeal (or any appeal court) may have arrived at a different conclusion.
Takeaways
Whilst ultimately there was no infringement in this case, the Supreme Court decision does provide clarity for brand owners, especially those in the fashion industry, as to how relevant and realistic post-sale circumstances can be taken into account when assessing similarity, it is not just the ‘side-by-side’ point of sale perspective which is to be assessed.
This decision also provides a handy reminder on the restraints of appeal courts and when they should (or should not, as is the case here) intervene.
If you wish to read the full Supreme Court judgment, you can do so below.
