In Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc ([2023] EWHC 706 (Ch), 28 March 2023), Mr Justice Miles in the High Court has dismissed likelihood of confusion, unfair advantage and detriment infringement claims brought by Umbro brand owner Iconix Luxembourg against online footwear seller Dream Pairs Europe Inc.

Background

Dream Pairs is an online seller of footwear. It uses the DP logo (seen below) on football boots and other active footwear, and also on some types of non-sports/active footwear (sometimes with, and sometimes without, the words ‘Dream Pairs’).

The use at issue in the case was mainly the advertisement and offer for sale of footwear by Dream Pairs on Amazon’s online marketplace at ‘amazon.co.uk’. There were also small sales volumes on eBay’s UK marketplace. Examples of the way in which the DP logo was used online are shown below:

Iconix owns the Umbro brand and sued Dream Pairs for trademark infringement, relying on two registrations for its ‘double diamond’ figurative marks (depicted below), registered for, respectively, (1) “articles of clothing for use in sports, athletics or gymnastics” and (2) various goods, including “footwear” (and all clothing).

Iconix also claimed that a trademark registration owned by Dream Pairs for its DP logo was invalid.

Legal issues

The key issues in the case were whether:

• the ‘double diamond’ marks and the DP logo were confusingly similar (under Section 10(2)(b) of the Trademarks Act 1994);
• the average consumer would make a link between them for the purposes of assessing alleged taking unfair advantage of, or detriment to, the ‘double diamond’ marks (under Section 10(3) of the act); and
• the context in which the DP logo was used made a difference to these assessments.

Decision

The judge decided that each of Iconix’s claims failed.

The court found that the Umbro brand is famous in the United Kingdom in relation to sportswear, and is particularly well known in relation to football kit and boots. Further, the ‘double diamond’ marks had developed a high level of distinctiveness in the United Kingdom through the use made of them. As to Dream Pairs’ use of the DP logo, he found that it was used for goods identical or similar to those covered by the ‘double diamond’ registrations. The relevant goods were comparatively inexpensive (a £25-35 price range) and, for such goods, the average consumer would exercise a moderate degree of attention.

In relation to the confusing similarity issue, applying the average consumer’s perspective, there was, at most, only a very low degree of visual similarity - “very faint” - between the ‘double diamond’ marks and the DP logo, described by the judge as a broken square with a P-shape in the middle. Accordingly, although the goods in issue were identical or similar, the court held that there was no likelihood of confusion among a significant proportion of the public interested in the goods and with the characteristics of the average consumer.

In relation to the unfair advantage/detriment issues, the judge found that the ‘double diamond’ marks did have a reputation in the United Kingdom for football boots and kit and performance wear but, nevertheless, the use of the DP logo would not give rise to a link to them in the average consumer's mind due to the very faint similarity between them. Again, this outweighed the identicality/similarity of the goods and the ‘double diamond’ marks’ distinctiveness and reputation.

Applying Lord Justice Kitchin’s dicta in Specsavers v Asda ([2012] EWCA Civ 24) that “the [impugned] sign is not to be considered stripped of its context”, the court found the textual references to Dream Pairs as the brand on the relevant ‘amazon.co.uk’ product detail pages where the images of the Dream Pairs footwear appeared, and the absence of any reference to Umbro, were relevant. This context tended against confusion because it indicated that Dream Pairs was a separate brand. The judge went on to say he would have reached his conclusion on infringement without the contextual information.

The Section 10(2)(b) and 10(3) claims therefore failed, as did the invalidity claim against the DP logo registrations, the parties having agreed that it stood or fell with the infringement claims.

Comment

This case shows that context counts and may mitigate against a finding of infringement, as the average consumer of sports footwear here is sufficiently sophisticated to distinguish between competing brands in the marketplace, where there is a low degree of visual similarity, even if the trademark is famous and has a high level of distinctiveness.

Evidence of actual instances of confusion or even survey evidence (if permissible) might have helped tip the scales in favour of the trademark owner.

Authored by Joel Smith and Alastair Shaw

This article first appeared in WTR Daily, part of World Trademark Review, in April 2023. For further information, please go to www.worldtrademarkreview.com.