Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc & Anor

Likelihood of confusion under section 10(2) requires a global assessment from the perspective of the average consumer, with marks considered as wholes and actual use assessed in context. The assessment must include a realistic post-sale scenario where appropriate. A consumer encountering a sign for the first time on footwear worn by another may see it from an angle, with foreshortening or only from the front or rear. That perspective can materially increase visual similarity. Courts must avoid letting side-by-side comparison or excision of a perceived component distort the overall assessment. Where the first-instance evaluation contains an error of principle, the appellate court may intervene and re-evaluate the evidence. Here, that approach established likelihood of confusion for a significant proportion of consumers and infringement of earlier mark 668.

Iconix owned UK registered Umbro device marks 668 and 459. It alleged that Dream Pairs infringed them under section 10(2) of the Trade Marks Act 1994 and sought invalidity of two Dream Pairs registrations. Iconix’s validity claims depended on the infringement claim.

Miles J dismissed the claims in [2023] EWHC 706 (Ch). On appeal, Iconix argued that the judge had misassessed visual similarity and post-sale confusion, particularly the appearance of the sign when first encountered on footwear worn by another person. The central issue was whether the realistic post-sale use of the sign created a likelihood of confusion for a significant proportion of consumers.

Disposition and appellate approach

1. The appeal was allowed. The Court held that Dream Pairs had infringed Iconix’s mark 668. It was unnecessary to decide whether mark 459 had also been infringed.
2. Likelihood of confusion is a multifactorial evaluation. The appellate court may intervene only for an error of law or principle, as illustrated by Actavis Group PTC EHF v ICOS Corp [2019] UKSC 15 and Re Sprintroom Ltd [2019] EWCA Civ 932. Once such an error is identified, the appellate court may re-evaluate the likelihood of confusion on the relevant findings.
3. For infringement, the sign must be assessed in the context of its actual use. The post-sale context may be relevant, and post-sale confusion may establish infringement even where there is no point-of-sale confusion. This was consistent with Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24 and Montres Breguet SA v Samsung Electronics Co Ltd [2023] EWCA Civ 1478.
4. The judge had erred by treating the P-like middle element as the distinctive and dominant element of the sign. The sign was required to be assessed as a whole, without excision or distortion. The error risked focusing the comparison unduly on differences between the sign and the marks.
5. The judge had also failed properly to assess the post-sale perspective. A consumer seeing the sign for the first time on footwear worn by another person might view it from above, at an angle, with foreshortening, or from the front or rear. In those circumstances the sign could appear more like a double diamond and therefore more similar to mark 668.
6. The Court accepted the judge’s findings on consumer attention, the identity or high similarity of the goods, the highly distinctive character of the marks and the limited significance of the absence of actual confusion. In the relevant post-sale context, there was a moderately high degree of similarity between mark 668 and the sign. Allowing for imperfect recollection and the other global factors, there was a likelihood of confusion on the part of a significant proportion of consumers.

1. Court of Appeal (Civil Division) — Allowed the appeal and held that Dream Pairs infringed mark 668: [2024] EWCA Civ 29.
2. High Court, Intellectual Property List (ChD) — Miles J dismissed Iconix’s infringement and related invalidity claims: [2023] EWHC 706 (Ch).