Iconix Luxembourg Holdings Sarl v Dream Pairs Europe Inc. and another

For the purposes of a trademark infringement claim the court was not confined to assessing the similarity of a sign to a registered trademark by a side-by-side comparison of the two logos, nor was the question of any possible confusion between them in the minds of the public limited to confusion when making an actual purchase.

Rather, the court could consider similarity by reference to how, for example, sports footwear would be viewed by the public when worn by players during matches, and could take account of the possibility of confusion other than at the point of sale, for example in advertising.

The Supreme Court so held when: (i) upholding reasoning of like effect by the Court of Appeal (Lady Justice King, Lord Justice Arnold and Lord Justice Birss) ([2024] EWCA Civ 29) in an infringement claim brought by Iconix Luxembourg Holdings Sarl (owners of the Umbro "double diamond" trademark (the Umbro mark)) against Dream Pairs Europe Inc and Top Glory Trading Group Inc (together, Dream Pairs); although (ii) reversing, on a different ground, the Court of Appeal's conclusion that there had been infringement by Dream Pairs.

Iconix's claim, brought under section 10(2)(b) of the Trade Marks Act 1994, had been dismissed by Mr Justice Miles ([2023] EWHC 706 (Ch)) on the ground that there was "at most" a very low degree of similarity between the signs and no likelihood of confusion between the two in the mind of the average consumer. The Court of Appeal considered the judge to have been in error and so carried out its own assessment, which led to the finding of infringement.

Infringement under section 10(2)(b) arose where a person used a sign in the course of trade that was "similar" to a registered trademark and was being used in relation to the goods or services for which the trademark was registered, so that there existed "a likelihood of confusion on the part of the public " Mark Vanhegan KC and Theo Barclay for Dream Pairs; Simon Malynicz KC and Thomas St Quintin for Iconix.

LORD BRIGGS and LORD STEPHENS, with whom the other members of the court agreed, said that the Umbro mark had been widely used on football boots in the United Kingdom since 1987. Dream Pairs sold footwear that used a sign (the DP sign) that Iconix claimed was similar and likely to cause confusion on the part of the public.

To assess the degree of similarity between the marks concerned, the court had to determine the degree of visual, aural (or phonetic) and conceptual similarity between them. If the threshold of similarity was passed, then an assessment of the degree of similarity became relevant to the subsequent question as to whether there existed a likelihood of confusion on the part of the public.

The "public" in the present context meant the average consumer of the category of goods or services in question. There was no requirement that the average consumer was an actual purchaser who would or had bought the specific goods or services in respect of which a potentially infringing sign was being used.

When considering infringement, it was necessary to consider the actual use of the sign complained of in the context in which the sign had been used. In the post-sale context, a realistic and representative way in which the average consumer would encounter a sign on footwear would be by seeing it from head height on footwear being worn by another person.

Dream Pairs, however, had argued that at the stage of assessing whether its DP sign and the Umbro mark were similar, extraneous circumstances such as how the goods were marketed or subsequently perceived were not to be taken into account. Rather, at that stage the court should be confined to considering the intrinsic features of the DP sign and the Umbro mark on a sideby-side analysis, leaving out of account any realistic and representative viewing angles in the post-sale environment.

Dream Pairs argued that if the DP sign and the Umbro mark were intrinsically dissimilar on a side-by-side comparison then the court did not have to proceed to make a global assessment of the likelihood of confusion to the public.

Dream Pairs said it was only if there was that intrinsic similarity that the court had to carry out a global assessment of the likelihood of confusion to the public and could then take into account realistic and representative viewing angles so as to adjust its initial assessment as to the degree of similarity.

However, If Dream Pairs' submissions had been correct then a global assessment of the likelihood of confusion would be ruled out in circumstances where there was no intrinsic similarity between the signs at issue even if, in a realistic and representative post-sale environment, there was similarity.

Hence post-sale circumstances could be taken into account for the purpose of establishing whether the signs at issue were similar and, if so, the degree of similarity.

Dream Pairs had also sought to establish as a matter of law that any post-sale confusion between the DP sign and the Umbro mark should not amount to actionable infringement under section 10(2)(b) unless it involved confusion so as to affect or jeopardise the essential function of a trademark as a guarantee of origin at the point of a subsequent sale or in a subsequent transactional context.

Hence Dream Pairs submitted that the Court of Appeal had erred in holding that it was possible in an appropriate case for use of a sign to give rise to a likelihood of confusion as a result of postsale confusion "even if there [was] no likelihood of confusion at the point of sale" (paragraph 12).

However, their lordships agreed with that statement of law at paragraph 12 and rejected Dream Pairs' submissions on the point. There was no reason in principle for imposing the limitation sought by Dream Pairs. A trademark continued to identify origin even after sale. Perceptions of a sign post-sale leading to confusion as to origin were not limited to perceptions at the point of a subsequent sale or in a subsequent transactional context.

For example, it was simply unsustainable to contend that the act of advertising should not be actionable unless there was confusion at the point of purchase or in a transactional context.

Although it therefore followed that the main points of law raised by Dream Pairs had been rejected, its appeal would be allowed on a different ground, namely that the Court of Appeal had been wrong to hold that what it perceived to be errors by the judge had required it to conduct the assessment of similarity and confusion afresh.

The question whether there was a trademark infringement under section 10(2)(b) was a classic example of what had come to be known as a multi-factorial assessment. It involved the finding of primary facts, the application of relevant principles or rules of law to those facts and the evaluative decision whether, thus considered, something had happened that fell within (in the present case) a statutory definition.

It was perhaps obvious, and certainly an inevitable conclusion drawn from experience, that reasonable minds, and in particular reasonable judicially trained minds, each faithfully applying the relevant law and principles, would come to different conclusions about the answer to multifactorial questions.

While of course the decision of an appellate court trumped that of the court below, the law had imposed structured constraints designed to prevent a free for all in a higher court whenever a party (with the necessary resources) wished to challenge the first instance decision of the trial judge.

The reasons for those constraints were well known. The trial was not a dress rehearsal. It was the first and last night of the show. Moreover, duplication of the trial judge's role on appeal was a disproportionate use of the limited resources of an appellate court. And further, in making his decisions the trial judge would have had regard to the whole of the sea of evidence presented to him. An appellate court would only be island hopping.

In the present case, there had been no irrationality or error of principle or of law by the judge sufficient to justify the Court of Appeal in substituting their own different view of the answer to the multifactorial question facing the judge from that which he had reached. The judge's decision dismissing the infringement claim would therefore be restored.