Court of Appeal Finds Dream Pairs Infringed on Iconix's Trade Mark due to Likelihood of Confusion in Post-Sale Context

Citation: [2024] EWCA Civ 29
Judgment on

Introduction

In the case of Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc & Anor [2024] EWCA Civ 29, the Court of Appeal (Civil Division) was presented with a trade mark dispute focusing on the likelihood of confusion between two similar footwear logos. The appeal was from a High Court decision which had dismissed Iconix’s claims. The Appeal Court had to consider several key topics, including the visual similarity of the logos, the context of their use, and the post-sale perception of the average consumer.

Key Facts

Iconix owns the UK Registered Trade Marks related to the sportswear brand Umbro, contesting that Dream Pairs infringed these by using a similar Sign on their footwear. Dream Pairs’ use of their Sign in the UK commenced in December 2018, primarily through sales via the Amazon UK website. The High Court had previously dismissed Iconix’s claims, concluding there was no likelihood of confusion, which was the decision under appeal.

The Court of Appeal reaffirmed established principles for assessing the likelihood of confusion under section 10(2) of the Trade Marks Act 1994, which include:

  • The necessity of a global appreciation of the confusion likelihood,
  • The perspective of the average consumer as being reasonably well-informed, circumspect, and observant,
  • The importance of considering marks as a whole and not deconstructed into their various details,
  • The evaluation of similarity between marks based on the overall impression, considering their distinctive and dominant components,
  • The potential dominance of one or more components of a composite trade mark,
  • The balancing of similarity between goods and marks in determining confusion likelihood,
  • The enhancement of confusion likelihood if the original mark is highly distinctive,
  • The requirement that mere association or recall of the original mark is not sufficient for a finding of confusion,
  • The potential for the public to believe that goods come from the same or economically-linked undertakings if the association between the marks exists.

Furthermore, post-sale context assessment was highlighted as a relevant factor when considering trade mark issues. The Court reiterated the importance of assessing infringement in the actual context of the sign’s use.

Outcomes

The Court of Appeal found that the initial ruling did not fully consider the post-sale context from the perspective of an average consumer who would encounter the footwear in everyday scenarios, which might not include a direct square-on view of the Sign. This led to a conclusion of infringement based on a re-evaluation of the likelihood of confusion in the post-sale context. The Court held that when the Sign was affixed to footwear and viewed from various angles, a sufficient level of similarity to Iconix’s ‘668’ Trade Mark resulted in a likelihood of confusion for a significant proportion of consumers. As such, Dream Pairs was found to have infringed on the ‘668’ Trade Mark.

Conclusion

The decision of Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc & Anor represents a significant reinforcement of the practices for evaluating the likelihood of confusion in trade mark cases. It underscores the complex nature of such assessments, especially regarding the practical, everyday perceptions of consumers rather than theoretical or deconstructed comparisons of marks. This case serves as a reminder that considerations of context, notably the post-sale environment, can significantly influence the legal outcome in trade mark disputes.

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