Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc & Anor [2024] EWCA Civ 29
https://www.bailii.org/cgi-bin/format.cgi?doc=/ew/cases/EWCA/Civ/2024/29.html
Key points
- The post-sale context in which goods are used is relevant to the assessment of the likelihood of confusion.
- There can be a likelihood of confusion as a result of post-sale confusion even if there is none at the point of sale.
- In the context of football boots, the relevant consumer would see the trade mark from different angles, and not solely that shown on the register. That must form part of the overall assessment.
Background
The Claimant, Iconix Luxembourg Holdings SARL (Iconix), owns the Umbro sportswear brand and the following (the Trade Marks):
- UK Trade Mark Registration No 991668 in Class 25:
- UK Trade Mark Registration No 903266459 in Class 25:
Iconix contended that the Defendants (Dream Pairs) infringed the Trade Marks by use of the following sign:
(the Sign”)
When affixed to footwear, the device was shown as follows:
The first instance decision[1]
Iconix alleged that the football boots infringed under sections 10(2) and 10(3) of the Trade Marks Act 1994 and that the Defendants’ trade mark registrations were invalid on the same bases.
Iconix’ claims were dismissed on the basis that the similarities were “very faint indeed”[2]. The decision was appealed on the grounds that that conclusion was “rationally insupportable”.
The law
The Court of Appeal observed that the test for the assessment of a likelihood of confusion under section 10(2) Trade Marks Act 1994 was well established:
(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.
The Court observed that, on appeal, it can only intervene if the lower court erred in law or in principle[3].
The appeal
Iconix’ key argument was that the lower court had focused on the side-by-side comparison of the Trade Marks and the Sign, and in particular the side-by-side comparison of the Trade Marks and the Sign as a graphic image. As a result he had failed to adequately consider the impact the Sign had on consumers when it was affixed to footwear, such consumers never having seen the graphical representation of the Sign, or even the images on the Amazon UK website, but who encountered the Sign for the first time in the post-sale context.
Iconix’ claimed that a consumer would not always see the Sign square-on. Its position was that in normal use the Sign would also often be on a boot covered in mud either on the football pitch or in the changing room. As a consequence, the Sign would appear from other angles to be more elongated. A consumer would therefore not necessarily see the break in the outer line or the P-like form in the middle. In this context, it argued that consumers seeing people wearing Dream Pairs’ shoes would believe them to originate from Umbro.
Given those circumstances, Iconix’ position was that the judge had made an error because he had incorrectly evaluated these factors.
The decision on appeal
It is well established that the post-sale context in which the goods are used is relevant to the overall assessment of the likelihood of confusion[4]. This means that it is possible in an appropriate case for use of a sign to give rise to a likelihood of confusion as a result of post-sale confusion even if there is no likelihood of confusion at the point of sale.
The Court of Appeal, found that the lower court did make an error[5]. It held that the average consumer encountering the Sign for the first time affixed to, say, a pair of football boots worn by someone else would not know what the Sign looked like when represented graphically. Nor would they even necessarily know, or find out, what the Sign looked like when viewed square-on. They might well only see it looking down, and therefore at an angle. In those circumstances the appearance of the Sign would be “foreshortened”. Furthermore, the consumer might well not see the Sign side-on, but only from the front or rear. In all of these circumstances the Sign would appear more like a double diamond, and therefore more similar to the Trade Marks.
In light of the above, on appeal it was held that there was a moderately high level of similarity between the Trade Marks and the Sign and taking all factors into account, there was a likelihood of confusion on the part of a significant proportion of consumers. As such, it was held that Dream Pairs had infringed Iconix’ Trade Marks.
Key takeaways
- Likelihood of confusion must be considered from the perspective of the entire life cycle of the product and circumstances related to its notional use.
- Post-sale confusionis sufficient to establish infringement even if there is no confusion at the point of sale.
References:
[1] Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc & Anor [2023] EWHC 706 (Ch)
[2] Paragraph 142 of the first instance decision
[3] Compare Actavis Group PTC EHF v ICOS Corp [2019] UKSC 15, [2019] Bus LR 1318 at [78]-[81] (Lord Hodge) and see Re Sprintroom Ltd [2019] EWCA Civ 932, [2019] BCC 1031 at [72]-[78] (McCombe, Leggatt and Rose LJJ)
[4] Montres Breguet SA v Samsung Electronics Co Ltd [2023] EWCA Civ 1478 at [85]
[5] Paragraph 34
