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By Hannah Jamil
This case involves a trademark dispute over allegedly similar logos on football boots, between Iconix (UMBRO) and Dream Pairs. The Supreme Court Ruling clarifies how Trade Mark similarity and confusion should be assessed, especially in post-sale contexts. The ruling also introduces wider implications on how similar branding can deceive customers, even after the point of sale.
Background
The UMBRO Trade marks have been widely used on football boots in the United Kingdom since 1987. Sales of goods bearing these Trade Marks with a value of more than $60 million were made in the UK in each of the years 2016-2018. However, since 2018, Dream Pairs has sold footwear branded with an allegedly ‘similar’ logo (the DP sign) in the UK via Amazon and eBay.
Iconix sued Dream Pairs for Trademark infringement on the basis that their use of the DP sign infringed the Umbro Trade Marks as it was confusingly similar under s10(2)(b) of the Trade Marks Act 1994. This claim was however dismissed by the High Court as they found a very low degree of similarity between the two signs and no likelihood of confusion on the part of the Public.
Iconix appealed the High Court decision where the Appeal was allowed. This was on the basis that the High Court’s finding that there was a very faint degree of similarity between the Trade Marks was irrational. The Court of Appeal found that there was a moderately high level of similarity between the logos in the post-sale context. Considerations were made about the angle of which the logo was viewed from rather than solely a side-by-side view. It also concluded that there was a likelihood of confusion on the part of a significant proportion of consumers.
Dream Pairs have now appealled to the Supreme Court. This appeal questioned whether the Court of Appeal was justified in overruling the trial judge who had carefully weighed all the factors before deciding there was no trade mark infringement. They also argued that focusing on how logos appeared in real-world use instead of comparing the logos side-by-side as flat images was a mistake.
They also claimed that only confusion that affects purchasing decisions should count, not confusion after a product is bought. They claimed trade marks are about protecting consumers from the point of sale, not about their later impressions.
How did the Supreme Court respond?
The similarity Issue
The Supreme Court rejected Dream Pairs’ claim, stating that it was legally valid to consider a logo via realistic viewing angles in post-sale situations. The law requires courts to look at the overall impression in which the sign gives to the real world – not just how in isolation. It was also found that failing to consider context, like how a logo is viewed in use, risks overlooking actual consumer confusion. They ultimately concluded that it is perfectly permissible and even in some cases necessary to consider real-life viewing angles when assessing similarity, especially in post-sale contexts.
The confusion issue
The Supreme Court ruled that post-sale confusion can count as infringement even if no one is confused when actually buying the product. It was explained that trade marks do not just protect purchases but act as symbols of origin that others could notice even after the product is purchased. Seeing someone wearing branded goods can influence buying behaviour or even possibly affect brand reputation. If others view the DP sign, and think it is a UMBRO product, this confusion still holds significant weight, whether it was before or after the purchase. The case of Ruiz-Picasso v Office for Harmonisation in the Internal Market was also referred to, which allowed post-sale confusion to form the basis for trade mark infringement. Therefore, it is valid to base infringement on confusion that happens after the product is sold, as it can still harm the brand.
Wider implications for Trade Mark Law.
Brands often rely on their marks being recognised in use as well as in shops or online. This case strengthens brand identity enforcement in the public sphere.
Viewing context also matters in similarity assessments regarding trade marks. Not only will companies need to take into consideration how a design appears side by side with other logos, but also in real life settings. Brands having to consider how their marks are received in action, moves trade mark law closer to consumer reality.
This therefore means that trade marks appearing on clothes, shoes, bags etc. will gain more protection, meaning that fashion, sportswear or even design brands may be more confident when challenging look-alikes.
The judgment also clarifies the term “average consumer” was not only a buyer but anyone who might be influenced by the mark, even after sale. This means that courts can now not limit their considerations to shopper intent, but also the wider public’s perception.
The context-based approach we see in this case aligns trade mark law with how modern brands function, especially in online marketplaces and global commerce. Trade mark law is constantly adapting, and this case is a key example of its ever-changing nature.
However, whilst this case has impactful wider implications to trademark law there are potential concerns regarding smaller companies. The decision has made it less difficult for big brands to assert control over broadly similar designs, even when the confusion might be subtle. There also may be concerns that it could penalise smaller companies whose branding is not of ill intent but ends up too close in similarity. Businesses may need to re-evaluate their branding risks not at just the point of sale, but throughout the life of a product. Strong enforcement does not just stop at checkout and designers and product developers need to be carefully assessing how a mark appears in real life.
This decision is a landmark for IP law in the UK and is likely to influence decisions far beyond just sportswear. It signals a shift towards a consumer-based trademark law. It strengthens protection for brands, specifically in post-sale environments and has set a new standard for how the courts determine similarity or confusion. Ultimately, trade marks don’t stop working once the sale is made, and neither does the law that protects them.
