The brand management company Iconix brought a claim for trade mark infringement against shoe retailer Dream Pairs, alleging Dream Pairs's "DP" sign was confusingly similar to Iconix's Umbro double diamond trade marks under section 10(2)(b) Trade Marks Act 1994. The High Court dismissed Umbro's submissions that, although not confusingly similar on a side-by-side comparison, the marks were confusingly similar when compared in the post-sale context of the mark being viewed from other angles on a football boot. On appeal, the Court of Appeal ruled that there was a "moderately high level of similarity" in the post-sale context having undertaken its own substantive review of the marks, overturning the High Court's judgment.
Dream Pairs appealed to the Supreme Court, which, while unanimously overturning the Court of Appeal's decision, affirmed the relevance of post-sale confusion. Key findings of the Court included:
- First, the post-sale context can be an important factor to consider when globally assessing similarity and confusion. Dream Pairs argued that only a side-by-side analysis should be conducted, and that post-sale confusion is only an actionable infringement if it causes damage at the point of sale. The Court rejected these arguments, distinguishing CJEU authorities and finding that a trade mark continues to designate origin even after the point of sale.
- Second, the Supreme Court found that the Court of Appeal should not have examined the issues of similarity and confusion, but only determined whether the judge at first instance had erred as a matter of law or principle in reaching the decision they did. The Court of Appeal had, in this case, overreached its powers in substituting its own views. The Court of Appeal is thus not an opportunity for a "second bite of the cherry" on the substantive merits of an infringement claim. Here, there was no suggestion that the first instance judge had not given careful consideration to the various angles at which the sign would be viewed, even if the appeal courts might have come to a different conclusion themselves.
The decision will serve as a caution to brand owners and third parties alike to consider how a mark may look at different angles when in use post-sale.
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