Umbro Trademark Dispute: Supreme Court Clarifies Post-Sale Confusion

Umbro Trademark Dispute: Supreme Court Clarifies Post-Sale Confusion

Introduction

The UK Supreme Court has affirmed that post-sale circumstances can be taken into account when assessing similarity in a trademark infringement case involving Umbro brand owner Iconix and fashion footwear brand Dream Pairs. The Court's decision clarifies how 'real world' use of trademarks should be considered when comparing marks.

Factual Background

Iconix, the owner of the Umbro brand, sued Dream Pairs in 2021 for selling shoes featuring a logo that it claimed was confusingly similar to two Umbro trademarks. The High Court dismissed Iconix's claim, finding that there was a very low degree of similarity between the signs and no likelihood of confusion.

Procedural Background

The case ended up at the Court of Appeal, which found that there was a "moderately high level of similarity" between the logos in the post-sale context. The Court of Appeal criticized the lower court ruling as "irrational." However, the Supreme Court has now overturned the Court of Appeal's decision and reinstated the High Court's ruling.

Issues Involved

1. Post-Sale Confusion: Whether post-sale circumstances can be taken into account when assessing similarity between marks.

2. Similarity Assessment: How to assess similarity between marks in the context of post-sale circumstances.

Contentions of the Parties

Iconix's Contentions: Iconix argued that Dream Pairs' logo was confusingly similar to its Umbro trademarks and that post-sale circumstances should be considered when assessing similarity.

Dream Pairs' Contentions: Dream Pairs argued that the logos were not similar and that post-sale circumstances should not be considered when assessing similarity.

Reasoning & Analysis

The Supreme Court's decision provides clarity on how to assess similarity between marks in the context of post-sale circumstances. The Court held that post-sale circumstances can be taken into account when assessing similarity, and that this can be a basis for a finding of infringement.

The Court's decision is significant for brand owners and IP practitioners, as it confirms that trademarks have an important ongoing role and existence after sale. The decision also highlights the importance of considering the "real world" use of trademarks when assessing similarity.

Final Outcome

The Supreme Court reinstated the High Court's decision, finding that there was no infringement. The Court also rebuked the Court of Appeal for overstepping its appellate power.

Implications

The decision has important implications for brand owners and IP practitioners. It confirms that post-sale circumstances can be considered when assessing similarity, and that trademarks have an ongoing role and existence after sale.

The decision may also lead to fewer appeals being heard in certain cases, as the Supreme Court emphasized that appeal courts should be slow to interfere with the first instance judge's decision.

In this case Iconix was represented by Brandsmiths. Meanwhile Dream Pairs was represented by Bird & Bird Partner Ewan Grist.