Supreme Court trade mark decision will impact owner enforcement strategies

Gill Dennis and Emily Swithenbank, intellectual property experts at Pinsent Masons, were commenting ahead of a judgment which is expected to be hugely significant for businesses in terms of the scope of protection provided by their registered trade marks.

During the appeal hearing, on 17 and 18 March, the Supreme Court will consider two foundational questions relevant to demonstrating trade mark infringement: the approach the courts should take when assessing whether trade marks are similar; and the point in time that the confusion of consumers should be assessed.

The dispute in which these questions have arisen centres around allegations of trade mark infringement by Iconix Luxembourg Holdings SARL, the owner of the renowned sportswear brand Umbro, against Dream Pairs Europe Inc. The controversy arose from the use by Dream Pairs of its so called “DP Logo” including on football boots, which Iconix claims is confusingly similar to Umbro’s well known “double diamond” trade mark which is also used on football boots

Iconix’s initial claim was dismissed in the High Court. The High Court found that the visual similarities between the logos were “very faint” and as a result there was no likelihood of pre- or post- sale consumer confusion. The judge held that consumers would view the DP Logo clearly and “square-on” online prior to making a purchase and this, together with other contextual information on the marketplace webpage which indicated that Dream Pairs was clearly a brand unrelated to Umbro, pointed away from consumer confusion. Similarly, consumers seeing the DP Logo on trainers being worn post-sale would not regard it as any more than faintly similar to Umbro’s double diamond.  The fact that consumers might be viewing football boots in use covered in mud made no difference to the judge’s overall assessment on low similarity and no consumer confusion.  

Iconix appealed the decision, and the Court of Appeal overturned the High Court’s ruling. Key to this decision was the Court of Appeal’s consideration of the possibility of post-sale confusion, namely that consumers would view the DP Logo looking from head height down at the feet of the wearer, at an angle and very rarely square-on. The court held that viewed in this “realistic and representative scenario”, the appearance of the DP Logo would be foreshortened increasing the visual similarity between it and Umbro’s double diamond to “moderately high”.

Given this higher level of similarity between the two logos and allowing for the average consumer’s imperfect recollection of the double diamond, the Court of Appeal held there was in fact a likelihood of consumer confusion and found as a result that use of the DP Logo infringed Umbro’s double diamond mark. Dream Pairs has appealed this decision to the Supreme Court.

The Supreme Court is expected to address several critical issues in its judgment, including exploring the methodology for determining the similarity of trade marks. The Supreme Court will also consider the appropriate point in time to assess consumer confusion in trade mark infringement cases.

“Both of these questions involve fundamental aspects of trade mark law,” said Dennis. “There is already an established body of case law on how to assess if trade marks are similar and so the Supreme Court’s treatment of these will be watched with great interest.”

“Post-sale confusion is already regularly relied upon in trade mark infringement proceedings and we would expect the Supreme Court to fully endorse this approach,” Dennis added. “However, guidance from the Supreme Court on the impact of context and the manner of assessment of post-sale confusion would be welcome.”

The Supreme Court is expected to deliver its judgment in the next three to eight months.