Trade Marks - Iconix's Appeal

 

Jane Lambert

Court of Appeal (Lady Justice King and Lords Justices Arnold and Birss) Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and another [2024] EWCA Civ 29 (26 Jan 2024)

In Trade Marks - Iconix Luxembourg Holdings SARL v Dream Pairs Europe I discussed Mr Justice Miles's judgment in  Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and another [2023] EWHC 706 (Ch) (28 March 2023) in this publication on 31 March 2023.  In that action, Iconix Luxembourg Holdings SARL ("Iconix") sued Drean Pairs Europe Inc. and Top Glory Trading Group Inc. ("Dream Pairs") for trade mark infringement under s.10 (2) (b) and (3) of the Trade Marks Act 1994. Mr Justice Miles dismissed the claim for the reasons I set out in my case note.  

The Appeal

Iconix appealed on the ground that the judge had failed correctly to assess the likelihood of post-sale confusion and on related grounds concerning his assessment of the similarity between Iconix's registered trade marks and the defendants' sign. The appeal came on before Lady Justice King and Lords Justices Arnold and Birss on 16 Jan 2024.  The Court handed down its judgment on 26 Jan 2024 (see Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and another [2024] EWCA Civ 29 (26 Jan 2024).  Lord Justice Arnold delivered the lead judgment and by para [36] he allowed the appeal.  Lady Justice King and Lord Justice Birss agreed.

The Dispute

In my previous case note, I wrote:

"This was a trade mark dispute. The claimant was the owner of the Umbro brand, one of the biggest and most famous in sportswear. It holds a number of well-known trade marks in the UK including the following which is registered under trade mark number UK00000991668 for 'articles of clothing for use in sports, athletics or gymnastics.'

The claimant also holds this mark [UK903266459]] which was filed for footwear and clothing at the European Intellectual Property Office in 2003 and is now registered in the UK:

The defendants distribute football boots and other footwear and clothing through Amazon and eBay, Their goods are marked with the following logo as in the photo of the green football boot above.

 

The defendants have registered that sign as a UK trade mark for clothing and footwear."

Lord Justice Arnold added that Iconix had used its trade marks on sportswear, particularly football kit, in the UK since at least 1973 and on footwear, and in particular football boots, since 1987.  Goods bearing those marks had been marketed and promoted extensively.  Sales of such goods in the UK exceeded US$60 million every year between 2016 and 2018.

He also said that Dream Pairs had used their logo in the UK since December 2018. They started selling footwear under the sign in or about February 2019. They distributed almost all of their goods through Amazon UK's website though they had also sold a few through eBay UK. Dream Pairs frequently, but not always, used their logo in conjunction with the brand name DREAM PAIRS which they had also used on its own. Sales of goods bearing the sign had been moderate. Between December 2018 and December 2022 Dream Pairs sold 4,802 pairs of adult football boots, 2,262 pairs of children's football boots, 2,844 pairs of children's trainers and 1,453 pairs of children's hiking sandals bearing the sign.

The Law

In addition to repeating the principles for assessing the likelihood of confusion that Mr Justice Miles had cited in his judgment, Lord Justice Arnold said that it was well established that it can be relevant to take the post-sale context into account when considering trade mark issues, including the likelihood of confusion.   He referred to para [85] of his own judgment in Montres Breguet SA v Samsung Electronics Co Ltd [2023] EWCA Civ 1478 and the cases that he mentioned in that parahhraph. He said that it was possible in an appropriate case for the use of a sign to give rise to a likelihood of confusion as a result of post-sale confusion even if there was no likelihood of confusion at the point of sale.

Post Sale Confusion

Lord Justice Arnold considered Mr Justice Miles's assessment of the likelihood of confusion between para [13] and [23] of his judgment.  He quoted para [162] of Mr Justice Miles's judgment in full at para [23] of his own:

"The claimant contends that there is a likelihood of post-sale confusion. Consumers who saw people wearing Dream Pairs shoes would confuse them with Umbro shoes. The claimant accepts that the average consumer would have the same attentiveness as in the position where they were considering buying the goods. Therefore the only relevance of this point was that the context of the buying process (i.e. the various other images and other information on the relevant Amazon page) would be absent. The claimant submitted that the court should consider how the shoes with the DP logo would look to other consumers in realistically likely situations. The claimant relies on an image where a boot was muddy and argues that this approach is permissible because football boots might well be seen on the pitch or the changing rooms covered in mud. I see the force of this argument in principle. However it must be remembered that the claimant has to show that it is the use of the Sign (rather than the shape of the boot or anything else) which leads to the relevant confusion. I do not consider that a significant proportion of the public (having the characteristics of the average consumer) would see the DP logo, even when muddy, as more than very faintly similar to the Marks. I do not consider that a significant proportion of the public would confuse the DP logo with the Marks. Carrying out the global assessment [I] reach the same conclusion for post-sale as for pre-sale confusion."

The Judgment

Referring to paras [78] to [81] of Lord Hodge's judgment in Actavis Group PTC EHF v ICOS Corp [2019] UKSC 15, [2020] 1 All ER 213, [2019] RPC 9, (2019) 167 BMLR 1, [2019] Bus LR 1318 and paras [72] to [78] of the judgments of Lords Justices McCombe and Leggatt and Lady Justice Rose in see Re Sprintroom Ltd [2019] EWCA Civ 932, [2019] BCC 1031, Lord Justice Arnold directed himself that the Court of Appeal can only intervene in a judgment at first instance if the trial judge had erred in law or in principle.

Iconix submitted that Mr Justice Miles had been wrong to say at para [140] of his judgment that the P-like form in the middle of the defendant's sign was "the distinctive and dominant element of the logo". The claimant argued that that was an error of principle because the sign was not a composite sign consisting of several distinct elements.   It had been a single sign that the court was required to consider as a whole and without excision or distortion. Furthermore, it was a material error because it led to an undue focus on the differences between the sign and trade mark instead of making a comparison. Lord Justice Arnold agreed that the judge had fallen into error though he did not have to decide whether it had been a material error.

The claimant also challenged the trial judge's conclusion that the similarity between the trade marks and the sign was only "very faint indeed."  Lord Justice thought that the assessment was understandable so far as UK903266459 was concerned and also when UK00000991668 was viewed as a graphic image but not when it was attached to footwear particularly when viewed from different angles,  

The main issue was whether the trial judge had erred when considering the post-sale context.  Iconix submitted that he had fallen into the common trap in trade mark cases of allowing his eye to be conditioned by the side-by-side comparison of the trade marks and the sign, and in particular the side-by-side comparison of the trade marks and the sign as a graphic image. As a result, he had failed properly to consider the impact of the sign as affixed to footwear upon consumers who had never seen the graphical representation of the sign, or even the images on Amazon's website but encountered the sign for the first time in the post-sale context.  Iconix also argued that the judge had failed to take into account the key aspect of the post-sale context, namely that the viewer would see the sign as affixed to footwear looking down from head height at the feet of another person wearing the footwear. indeed, the average consumer would frequently see the sign at an angle and not square-on.

Lord Justice Arnold agreed that Mr Justice Miles had erred.   He had failed to consider that the average consumer would see Dream Pairs's sign on a football boot worn by a player and would not be familiar with the graphical image in the Trade Marks Registry.  He would see the sign from a distance and at an angle,  In the learned Lord Justice's words:

"In all of these circumstances the Sign would appear more like a double diamond, and therefore more similar to 668, than in the graphic image. 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."

It was, therefore, necessary for Lord Justice Arnold to re-evaluate the likelihood of confusion.  Having found a moderately high level of similarity between UK00000991668  and the sign and taking account of all the other factors found by the judge, his lordship concluded that there was a likelihood of confusion on the part of a significant proportion of consumers.

It therefore followed that Dream Pairs had infringed UK00000991668. 

Comment

This judgment suggests that the comparison between mark and sign has to be made in the context in which they would be seen by the average consumer.  The circumstances were unusual in this case because the mark and sign would be seen fleetingly from a distance and at speed with the goods to which they would be affixed might be splattered with mud. 

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