Iconix Luxembourg Holdings Sarl v Dream Pairs Europe Inc.

Hearing dates: 14 and 16 March 2023

APPROVED JUDGMENT

This judgment was handed down remotely at 10.30am on 28 March 2023 by circulation to the parties or their representatives by email and by release to the National Archives.

These are trade mark infringement proceedings.

The claimant owns the Umbro brand. It relies on two trade mark registrations (one of which is for a series of two marks).

Those registrations protect the following Marks:

Mark 1 (1st of series) Mark 1 (2 ^nd of series)

Mark 2

Mark 1 (UK registration 991668) is registered for “articles of clothing for use in sports, athletics or gymnastics”; Mark 2 is registered for various goods, including “footwear” (and all clothing). Mark 2 arises from a mark originally registered as an EU trade mark, but since the departure of the UK from the EU it has become a national right, deemed registered as of its filing date in 2003.

The Marks are each registered in monochrome. They therefore cover use in any colour (see e.g. Phones 4U v Phone4U.co.uk Internet Ltd [2007] RPC 5 at [70]).

The Marks have been in use on sportswear in the UK since at least 1973, and have been used on the kit of national and professional football teams since that time, as well as on kits of rugby union and rugby league teams. They have been used on footwear since 1987, and in particular on football boots. Professional footballers including Alan Shearer and Michael Owen have worn boots bearing the Marks.

Sales of goods bearing the Marks in the UK with a value of more than US$60 million were made in each of the years 2016 to 2018.

The defendants admit that the Marks have some reputation and some enhanced distinctive character as a consequence of the use made of them, but the extent of that reputation and enhanced distinctive character is in issue. In broad terms, the defendants admit that use on football kit has resulted in the Marks becoming known by members of the public interested in football boots but that there is no broader reputation.

The claimant complains about the defendants' use of a logo in relation to footwear sales in the UK since December 2018.

The defendants have registered the following trade mark:

The logo element (without the words) is referred to below as “the DP logo” or “the Sign”.

The defendants have used the DP logo (sometimes with and sometimes without the words Dream Pairs) for football boots and other active footwear, and have also used it on some types of non-sports/active footwear. The claimant contends that all such use is infringing.

The most important aspect of the claimant's pleaded case complains about football boots and other active footwear, but it also extends to any type of footwear that bears the DP logo. The claimant accepted that there may be different considerations for each, because of questions about the goods to which the claimant's reputation applies. In broad terms the allegedly infringing goods can be grouped as football boots; children's trainers; other active footwear such as hiking sandals; snow boots; and other footwear (including slippers and ladies' fashion footwear) bearing the Sign.

The defendants' use of the DP logo in the UK commenced around December 2018. It started selling in the UK about February 2019. The use of the DP logo has been almost exclusively in the advertisement and offer for sale of footwear through the Amazon UK website (“Amazon UK”). There have also been small volumes of sale through eBay's UK site.

Some examples of the defendants' presentation of the DP logo, taken from images on Amazon, are identified in the particulars of claim and are reproduced in the annex to this judgment. Some of the shoes carry the name Dream Pairs, others do not.

The defendants have also sold a wide variety of footwear under the Dream Pairs name without using the Sign, and have sold a wide variety of footwear under other names (Bruno Marc, and Nortiv8) without using the Sign. The claimant does not complain about those activities.

Infringement is alleged under sections 10(2)(b) and 10(3) of the Trade Marks Act 1994 (“the Act”).

The claimant also alleges that two trade mark registrations obtained by the second defendant in 2020, were invalid because they conflict with the claimant's Marks. The parties agreed that the validity of these registrations stands or falls with the infringement case.

The claimant alleges and the defendants accept that if infringement is made out, the defendants are jointly and severally liable.

Witnesses

The claimant called two witnesses, Mr Anthony Little and Mrs Helene Hope. Both give evidence relevant to the extent of the reputation of the Marks and to the extent to which their distinctive character has been enhanced through use.

Mr Little gave evidence about his roles at Umbro; the claimant's business, explaining how the claimant works with associated companies and licensees to exploit its brand; the financial value of sales of goods bearing the Marks; marketing and sponsorship activities; the presentation of the Marks (which Mr Little calls “the double diamond logo”) on the claimant's goods; and the variety of consumers of the claimant's goods.

Mr Little generally did his best to assist the court. There was one series of questions in cross-examination about a spreadsheet showing sales of categories of goods where I found some of his answers to be unconvincing. There were entries of zero for some types of goods in certain years. Mr Little said that the figures were accurate and that it was realistic that there were no sales of the relevant goods in those periods. Those answers seemed surprising. On further analysis it emerged that there had indeed very probably been sales of the relevant goods but that they had been lumped with others into another category. It seemed to me that Mr Little was a little too fast to come up with answers to justify the spreadsheet. Despite this part of his evidence, I concluded that he was generally trying to assist the court.

Mrs Hope gave evidence about her role at Umbro, where she is the Head of Global Brand Marketing; the history of the Umbro brand; some of the use made of the Double Diamond Logo, including collaborations with other brands; the Umbro consumer; and examples of the marketing and promotion of the Umbro brand and the Marks. She was a straightforward and credible witness.

The defendants called Mr Chuan Shan Cao. He is the founder and Chairman of the defendants, and is involved in the day to day running of both companies. He gave evidence about the corporate structure and growth of the defendants; the commencement of the defendants' trade in the UK and details of how it operates its UK sales through Amazon UK and eBay; the creation of the Sign complained about (referred to by him as the DP Logo), its use, potential changes to it, and the adoption of a different logo from some children's shoes; and his knowledge of Umbro.

The claimant submitted that his evidence was evasive and that he deliberately failed to answer the questions. I did not reach that conclusion. His evidence was rather a mixed bag. Though he has lived in the US for some years, English is not Mr Cao's first language. I take this into account in assessing his evidence: my impression was that at times he did not immediately understand the questions. There were some areas where he volunteered information which might have been thought helpful to the claimant, such as his description of a visit in 2018 to a Chinese factory where Umbro goods were being made. On the other hand, I thought that some of his answers about the resemblances between Dream Pairs shoes and other well known brands (including a pair of boots which had a Puma-type marking) were somewhat defensive and unconvincing. He clearly found these questions hard to answer and appeared stumped for a response. Overall I concluded that Mr Cao was doing his best to assist the court but approached some of his evidence with reservations.

Law

The Legislation

In relevant part, s.10 of the Act provides as follows:

“(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because—

(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or

(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.

(3) A person infringes a registered trade mark if he uses in the course of trade, in relation to goods or services, a sign which—

(a) is identical with or similar to the trade mark,

(b) [deleted by amendment]

where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

(3A) Subsection (3) applies irrespective of whether the goods and services in relation to which the sign is used are identical with, similar to or not similar to those for which the trade mark is registered.

…

(4) For the purposes of this section a...