This article considers an unusual, but potentially significant UK trade mark judgment dealing with post-sale confusion. The case referred to is Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc. and another.
The facts
Iconix is the owner of the Umbro Logo, which can be described as a double diamond trade mark. Iconix sued Dream Pairs for trade mark infringement – the claim related to football boots and footwear that featured the Dream Pairs Logo, seemingly a stylised DP.
The logos appear side-by-side below:
The law
Iconix relied on Sections 10(2)(b) and 10(3) of the UK Trade Marks Act 1994 which are very similar to Section 34 of the South African Trade Marks Act 194 of 1993:
- Section 10(2)(b) deals with the unauthorised use of an identical or similar trade mark in respect of the same or similar goods to those of the registered trade mark, which results in consumer confusion.
- Section 10(3) deals with the unauthorised use of an identical or similar trade mark in respect of goods or services that are not similar to those covered by the registered trade mark, where this use takes unfair advantage of, or damages, the distinctive character or repute of the registered trade mark.
The High Court
Iconix's case failed, with the High Court rejecting the trade mark infringement claim which led to Iconix filing an appeal.
The Court of Appeal
The appeal was heard by three judges, namely Lady Justice King and Lord Justices Arnold and Bliss, and judgment was handed down in January 2024.
A number of points are worth noting:
- The court accepted that the Umbro Logo is very well known in the UK - Iconix has used its Umbro Logo in the UK since 1973, sales have been huge, often in excess of US$60 million per annum.
- Dream Pairs distributes its products, namely boots and clothing, through Amazon and eBay.
- Dream Pairs has registered the trade mark DREAM PAIRS & Logo in the UK. The DREAM PAIRS & Logo trade mark has been in use in the UK since 2018 and the Logo is also used without DREAM PAIRS.
The stand-out aspect of this judgment is the considerable attention that was given to 'post-sale confusion'.
Post-sale confusion
Iconix argued that the trial judge, Judge Miles, had failed to take into account the likelihood of post-sale confusion. To clarify, the confusion element that plays such a key role in trade mark law generally occurs pre-sale - where a consumer is confused at the point of sale and may end up buying the wrong product.
Lord Justice Arnold made the point that post-sale confusion is something that should be taken into account when considering the likelihood of confusion – this case is the authority for this proposition: Montres Breguet SA v Samsung Electronics Co Ltd (2023) EWCA Civ 1778. The judge went on to make the point that, in the post-sale context, the average consumer seeing the Dream Pairs Logo affixed to a pair of boots would not see the sign properly – seen in this way, it 'would appear more like a double diamond'. In other words, confusingly similar to the Umbro Logo.
The judge said this:
'There is nothing artificial or unrealistic about this comparison. On the contrary, it is a realistic and representative scenario for assessing the post-sale impact of the use of the sign upon the perception of the average consumer.'
The judge also went on to say: 'It is well established that it can be relevant to take post-sale confusion into account when considering trade mark issues, including the likelihood of confusion... Thus 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 confusion at the point of sale.'
We are not yet aware that the issue of post-sale confusion has come up in a South African case but it certainly cannot be ruled out.
Reviewed by Gaelyn Scott, Head of ENS' IP Practice.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
