Lifestyle Equities CV and another v Amazon UK Services Ltd and others
[2024] UKSC 8
Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc & Anor.
28 March 2023
[2023] EWHC 706 (Ch)
High Court
Umbro sued Dream Pairs for copying their logo. The judge said the logos weren't similar enough to cause confusion, especially since Dream Pairs' branding clearly separated it from Umbro on Amazon. Umbro lost the case.
Key Facts
- •Iconix Luxembourg Holdings SARL (Claimant) owns the Umbro brand and related trademarks, including two double-diamond logos.
- •Dream Pairs Europe Inc and Top Glory Trading Group Inc (Defendants) used a logo (DP logo) on footwear sold in the UK.
- •The Claimant alleged trade mark infringement under sections 10(2)(b) and 10(3) of the Trade Marks Act 1994.
- •The DP logo's similarity to the Umbro logos and the likelihood of consumer confusion were key issues.
- •The Defendants sold a variety of footwear, including football boots, children's trainers, and other active footwear, through Amazon UK and eBay.
- •Sales of Umbro goods bearing the Marks in the UK totalled over US$60 million annually between 2016-2018.
- •The Defendants argued that despite significant parallel trading for several years, there was no evidence of actual confusion.
Legal Principles
Trade mark infringement under section 10(2)(b) requires use of a similar sign in relation to similar goods, leading to a likelihood of confusion.
Trade Marks Act 1994, section 10(2)(b)
Trade mark infringement under section 10(3) requires a reputation in the UK, use of a similar sign, a link between the sign and trademark, and detriment to distinctive character or repute, or unfair advantage.
Trade Marks Act 1994, section 10(3)
The likelihood of confusion is assessed from the perspective of the average consumer, who is reasonably well-informed and observant.
Case law (e.g., Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24)
Similarity between the mark and sign is assessed globally, considering visual, aural, and conceptual aspects.
Case law (e.g., J.W. Spear & Sons v Zynga Inc [2015] EWCA Civ 290)
Absence of actual confusion is not necessarily fatal to a claim, but its significance increases with the duration of parallel use.
Case law (e.g., Jack Wills v House of Fraser [2014] EWHC 110 (Ch))
Outcomes
The claim under section 10(2)(b) failed.
The court found only a very low degree of similarity between the marks and the sign, and the context on the Amazon webpage (showing Dream Pairs as a separate brand) further mitigated the likelihood of confusion.
The claim under section 10(3) failed.
The court found insufficient evidence of a link between the sign and the marks in the minds of average consumers, and no evidence of detriment to the distinctive character or repute of the marks, or unfair advantage taken by the defendants.