The UK Supreme Court gives guidance on Post-Sale Confusion

In 2021 Iconix (owner of the well-known UMBRO brand, including the “double diamond logo”) brought trade mark infringement proceedings against DPE. The case concerned the following marks:

Iconix’s well known registered marks, covering inter alia footwear, dating back as early as 1972, and used on goods such as football boots since 1987.

DPE’s use of the below sign for a variety of footwear sold in the UK, via Amazon and eBay, since 2018

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The infringement action was based upon a claim of likelihood of confusion under Section 10(2) of the UK Trade Marks Act 1994, and based upon the assertion that Iconix’s mark enjoyed a reputation and that DPE’s sign took unfair advantage of, or was detrimental to the distinctive character or the repute of the registered mark, under Section 10(3) of the Act. At first instance, the 10(2) claim was rejected on the basis that there was “at most a very low degree of similarity” and no likelihood of confusion. The 10(3) claim was also rejected.

Iconix appealed, claiming that the finding of a very low degree of similarity was irrational when one considered the DPE sign on footwear and viewed from other angles, rather than square-on, which in the context of “post-sale confusion” is how consumers may view the marks. Iconix was successful in its appeal, with the Court of Appeal finding there to be “a moderately high level of similarity” in the post-sale context, particularly when the mark is viewed at football matches, where viewers look down at players wearing such boots. In this regard, one can see that in such a situation, the DPE sign might appear elongated and therefore more similar to the Iconix mark than when viewed square-on:

The Court of Appeal therefore found there to be a likelihood of confusion.

DPE appealed to the Supreme Court, disputing the Court of Appeal’s decision that the judge at first instance had reached an irrational conclusion or made any error of law or principle, sufficient to entitle it to assess similarity and confusion afresh. DPE’s appeal was successful, with the Supreme Court holding that the judge at first instance had considered similarity with the marks compared at various angles in reaching the decision that there was only a very low degree of similarity, and had not erred in principle or law.

However, the Supreme Court gave valuable guidance on the issue of post-sale confusion, rejecting DPE’s claims relating to the assessment of similarity and confusion. It confirmed that:

The Court is not restricted to an assessment of the intrinsic features of marks on a side-by-side analysis.
Realistic and representative post-sale circumstances can be taken into account to establish whether signs are similar and if so the degree of similarity. This is consistent with the requirement that a “comparison must be based on the overall impression made by those signs on the relevant public”.
It is not necessary for post-sale confusion to result in damage/jeopardise the essential function of a trade mark as a guarantee of origin at the point of a subsequent sale or in a subsequent transactional context for there to be an actionable infringement.

In certain circumstances, and particularly for certain goods, this judgement will enhance the rights of brand owners. For instance, it may be helpful in tackling look-a-like product branding. However, the decision also reinforces the need for the careful clearance of new logos, taking account of how such marks might appear in realistic and representative post-sale circumstances

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Alistair Gay

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