Diamonds are forever, but Umbro's diamond reputation did not go far enough
Locations
In the judgment handed down on 28 March 2023 (Iconic Luxembourg SARL v Dream Pairs Europe Inc and another [2023] EWHC 706 (Ch)), Mr Justice Miles found that Dream Pairs' use of a tilted square sign for footwear did not infringe Umbro's registered trade mark rights protecting its famous "double diamond" logo for various goods, including sports footwear.
Background
The Umbro brand (owned by claimant Iconix Luxembourg Holdings SARL) has been using its "double diamond" logo for sportswear in the UK since 1973. The sign, described as two flat and elongated diamonds, has also been used for footwear since 1987 and, in particular, for football boots;
The defendant, Dream Pairs Europe Inc., is a US-based supplier of women's and children's footwear, primarily active online under the brand 'Dream Pairs'. Dream Pairs' children's range also includes sports footwear, such as girls' sneakers and football boots. Its products have been sold online in the UK since 2019, bearing a tilted round-cornered broken square with a line towards the centre ending with a closed loop forming the letter 'P' in the middle (the "DP Logo"). Dream Pairs used the DP Logo both with and without the words 'DREAM PAIRS', and the former version was registered as a UK trade mark:
Umbro alleged that Dream Pairs' use of the DP logo infringed two UK trade mark registrations protecting variations of its "double diamond" logo ("Umbro's Marks") on the following grounds:
- the DP logo is similar to, and it is used in relation to goods and services that are similar to, Umbro's Marks with a likelihood of confusion on the part of the public (section 10(2)(b) Trade Marks Act 1994); and
- the DP logo is similar to Umbro's Marks, where the latter have reputation in the UK, and Dream Pairs' use of the DP logo takes unfair advantage of, or is detrimental to, such reputation or distinctive character (section 10(3) Trade Marks Act 1994).
The decision
Section 10(2) claim
Miles J held that there was no likelihood of confusion despite noting that Umbro's Marks had acquired significant reputation and a high degree of distinctive character, which would usually tend to favour a finding of greater likelihood of confusion of the relevant public.
Instead, the court ruled that such enhanced distinctiveness was not sufficient to overcome its finding of very low visual similarity between the signs. Miles J held that, despite their depictions of rhomboid shapes tilted at an angle with outer and inner dominant elements, the visual similarities between Umbro's Marks and the DP logo were "very faint indeed".
Additionally, while the signs had no aural or conceptual elements, the court considered relevant that Dream Pairs' products would be advertised under the brand name 'Dream Pairs', which is different from the ‘UMBRO’ brand name used to advertise products in conjunction with Umbro's Marks.
Finally, Miles J deemed Umbro's evidence of actual confusion insufficient and inconclusive, and further dismissed Umbro's claim of indirect confusion.
Section 10(3) claim
The court also rejected Umbro's claim based on reputation, despite its finding that Umbro's Marks were of significant repute. In light of the "very faint" and "at most a very low degree of similarity" between the signs, Miles J found that consumers would not establish a link between the two brands.
The court further held that Umbro failed to demonstrate that its products were associated with qualities from which Dream Pairs would obtain an unfair advantage. Finally, Miles J considered that Dream Pairs’ use of the DP Logo was not detrimental to Umbro's Marks' reputation or distinctive character because both parties provided inexpensive products and Dream Pairs' product reviews were mainly positive.
Conclusion
This case is a helpful and straightforward reminder of the tests for trade mark infringement claims based on likelihood of confusion, as well as detriment and unfair advantage.
Most notably, the judgment shows that well-established and widely-known brands cannot necessarily rely solely on the high levels of reputation acquired by their trade marks, where the other conditions required to establish infringement are only partially met.
While reputation can play a key role when assessing the likelihood of confusion, it will only go so far. In particular, even substantial reputation and a high degree of distinctiveness may not be sufficient to overcome a finding of low similarity between the contested signs.
The court's approach clearly emphasised that all relevant circumstances must be taken into account when assessing likelihood of confusion, including any elements used alongside the contested signs to advertise goods and services, such as a brand name.