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A finding of no luck for Umbro's double diamond logo

Picture of Bethany Wheeler-Fowler

By Bethany Wheeler-Fowler

21 Apr 2023 | 3 minute read

The High Court recently issued its judgment on the decision of Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and another [2023] EWHC 706 (Ch). This was in relation to whether or not there was trade mark infringement of the Umbro 'double diamond logo' owned by Iconix. Iconix pleaded that its earlier rights were infringed on the basis of confusing similarity (section 10(2)(b) of the Trade Marks Act 1994 ("TMA 1994")) and reputation/unfair advantage (section 10(3) of the TMA 1994).

The judge accepted that Umbro enjoyed significant recognition and a high degree of distinctive character acquired through use but considered that the contested diamond mark was only of faint similarity which, among other factors, ultimately led to a finding of no infringement.

The background

Iconix is the owner of Umbro, the sportswear manufacturer that has used its "double diamond" logo (shown below) on sportswear in the UK since 1973 and on footwear since 1987. Sales of goods bearing its marks have amassed to over US$60 million in 2016, 2017 and 2018.

Iconix brought a trade mark infringement claim on the basis of Dream Pairs' use of a registration and contested logo as shown below on football boots and other footwear. While Dream Pairs' use began in December 2018, it sold its footwear in the UK from around February 2019 although almost exclusively via Amazon.

Infringement was alleged pursuant to sections 10(2)(b) and 10(3) of the TMA 1994 and relief was sought for all uses of the contested logo for footwear sold in the UK.

Iconix Marks (the "double diamond logo")
Dream Pairs' registration
Dream Pairs' contested logo

The decision

After setting out a useful summary of the key principles underpinning both grounds pleaded, the judge analysed the parties’ evidence. Noting that there were significant sales of football boots and other performance footwear under the double diamond logo and its widespread promotion, the judge held that the Umbro brand is famous in the UK in relation to sportwear and is particularly well known in relation to football kit and boots. This was so much so that the Iconix marks developed a high level of distinctiveness through use. Umbro was considered to have a substantial reputation for football boots and kit, with a lesser reputation for other performance wear.

Furthermore, the judge highlighted that Iconix did not challenge Dream Pairs’ evidence surrounding the creation of the contested logo which was purportedly designed by the founder without knowledge of the Umbro logo and brand. Additionally, there was no evidence of consumers making a link between the contested logo and the Umbro double diamond, not even by way of an Amazon review. Evidence of the results from a Google search of “dream pairs umbro” as put forward by Iconix was also criticised – the judge noting, for instance, that there were examples on reselling sites that failed to show either party’s logos and some of the evidence was seemingly from the US. This was unhelpful since it was not representative of the average UK consumer and related people (such as the person listing Dream Pairs on reseller sites and a YouTuber as noted below) were not called or approached for evidence.

While the judge found identity between the contested logo being used on footwear with Iconix’s protection of footwear under Mark 2, there was a high measure of similarity in respect to the clothing goods solely protected by Mark 1. When considering the goods, the average consumer would exercise a moderate degree of attention. As to the similarity of marks – it was “very low indeed”.  The court took the view that whilst the consumer may not notice the break in the outer figure of the contested logo on some presentations, the average consumer would notice the distinctive and dominant “P-like form” in the middle of the Dream Pairs logo.

Looking at the use of the contested sign in context, the judge commented that the high level of distinctiveness of the marks and the “substantial fame of the Umbro brand in connection with its use” would enable the consumer aware of the marks to associate the double diamond logo with the Umbro name. Furthermore, since the average consumer would notice the Dream Pairs Amazon page said nothing about Umbro, the goods being branded as something other than that of the marks (i.e. the Amazon page referenced Dream Pairs) was relevant when considering if the average consumer would likely be confused.

Findings

Despite Umbro enjoying a significant recognition and distinctive character, the marks were not sufficiently similar to give rise to a likelihood of confusion, and therefore infringement, on the basis of s.10(2). The judge commented specifically on Iconix's reference to post-sale confusion in "realistically likely situations", such as where a muddy football boot was seen on the pitch or in changing rooms. It was held that since the contested logo would still not be considered more than very faintly similar, confusion was not considered likely and the same principles as pre-sale confusion would apply.

As to the s.10(3) ground, in addition to the points above, the judge highlighted the lack of Amazon reviewers drawing a link between the parties. Also cited was the evidence put forward of a YouTube reviewer pointing reference to Umbro when reviewing a Dream Pairs shoe, though this was considered not helpful since the YouTuber was not called or approached as a witness and his purpose in making associations/comparisons for the video was not the view of an average consumer linking the products.

Due to the very faint similarity and lack of a link being made by the average consumer, the reputational claim failed. The court noted that even if it was successful, there was nevertheless no evidence of unfairness or exploitation of the reputation of the double diamond logo nor any association that would risk causing a change in economic behaviour (both parties' shoes were lower priced and there was no quality difference).

This is an interesting decision reiterating that while a strong reputation and distinctiveness are helpful to establish infringement, those factors do not surpass the need for the marks to be sufficiently similar. Additionally, it highlights the importance of evidence. This is especially when establishing a link in reputation claims and, in confusion, when considering the context that the average consumer views the relevant infringing act. For instance, here due attention was paid to the Dream Pairs Amazon page showing how the brand functions as a separate brand and sells its goods without any mention of Umbro or the double diamond logo.

Bethany Wheeler-Fowler, Solicitor at Foot Anstey

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