Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc & Anor.

For trade mark infringement based on similarity, the court must first identify some overall similarity between the sign and the registered mark. If similarity exists, it must assess confusion globally, considering the goods, the average consumer, the distinctive character of the mark, the context of use and all relevant circumstances. A highly distinctive mark and identical goods do not overcome an exceptionally low degree of similarity where the average consumer would recognise the defendant’s branding as separate.

For infringement involving a mark with a reputation, a link must be established in the mind of the average consumer. Dilution and tarnishment require a serious risk of a change in economic behaviour, established by deduction rather than supposition. Unfair advantage requires both an advantage and unfairness. Mere similarity or commercial benefit is insufficient.

The claimant, owner of the Umbro brand, brought proceedings under sections 10(2)(b) and 10(3) of the Trade Marks Act 1994. It alleged that the defendants’ DP logo, used on footwear sold principally through Amazon UK, was similar to its registered monochrome marks and infringed them through confusion, dilution, tarnishment or unfair advantage.

The defendants admitted some reputation and enhanced distinctive character but disputed the breadth of that reputation and denied infringement. The validity of two defendant trade mark registrations was agreed to stand or fall with the infringement claims. The central issues were the similarity between the marks and sign, the likelihood of confusion, the existence of a link, and the alleged forms of injury.

1. Disposition. The claims for infringement under sections 10(2)(b) and 10(3) of the Trade Marks Act 1994 were dismissed. The validity challenges therefore also failed.
2. Under section 10(2)(b), the claimant had to establish use in the course of trade, without consent, of a sign similar to the mark in relation to identical or similar goods, giving rise to a likelihood of confusion. Similarity was a threshold requirement. The court assessed visual, aural and conceptual similarity and found, overall, at most a very low and faint degree of similarity.
3. The goods were identical or similar and the Umbro marks had highly distinctive character. The average consumer would pay moderate attention. Those factors favoured confusion, but the differences between the marks and sign, together with the presentation of the goods under the separate Dream Pairs brand, outweighed them. There was no likelihood of direct or indirect confusion, including in post-sale use.
4. The absence of evidence of actual confusion was given no significant weight. The court accepted that confusion might not have been recorded in documents or complaints. The claimant’s internet examples were not reliable evidence because they did not represent the relevant UK average consumer.
5. For section 10(3), the marks had a reputation for football boots, kit and performance wear, but the use of the DP logo did not create a link in the mind of the average consumer. The very faint similarity was not outweighed by the reputation, distinctiveness or identity of the goods.
6. In any event, the claimant established neither dilution nor tarnishment. There was no sound evidential basis for a serious risk of changed economic behaviour. The claimant also failed to establish an advantage derived from the Umbro reputation, or that any such advantage was unfair. The case was confined to use of the logo and could not be expanded into an unpleaded case about copying product shapes or other brands’ get-up.