The High Court has rejected a claim that football boots and other footwear bearing the Dream Pairs logo infringe Umbro’s double diamond trade mark.
Iconix, the owner of two trade mark registrations for Umbro, had claimed that the Dream Pairs logo (used for football boots and other footwear since December 2018) was confusingly similar to its trade marks and took unfair advantage of the reputation of the marks. But Mr Justice Miles dismissed all the claims.
The judge, Mr Justice Miles, rejected three examples of what Umbro claimed was actual confusion under Section 10(2)(b), based on Google searches for “dream pairs umbro”, saying no weight could be attached to them. But equally he gave no weight to the absence of evidence of confusion cited by Dream Pairs.
Finding that the average consumer would exercise a moderate degree of attention, that “there is at most a very low degree of similarity … it is very faint indeed” and the marks have a highly distinctive character, Miles J was “not satisfied that there was a likelihood of confusion among a significant proportion of the public interested in the goods in question”. He reached the same conclusion in regarding to post-sale confusion.
Turning to the claim under Section 10(3), the judge found that Umbro had a reputation in the UK for football boots, kit and performance wear but the use of the Dream Pairs logo would not give rise to a link to the Umbro marks in the mind of the average consumer:
“Essentially I do not consider that the other factors outweigh the very faint similarity. I have not been persuaded that a significant proportion of the public (applying the perspective of the average consumer) would make a mental association between the Sign and the Marks.”
In case that finding was wrong, he also assessed whether there was any injury. Interestingly, he rejected damage to reputation on the ground that the pricing and quality of each brand were similar, and there was no evidence that a detrimental association would affect Umbro’s sales. The judge said:
“Umbro has a substantial reputation for football boots and kit with a somewhat lesser reputation for other performance wear… It is commonly associated by the UK consuming public with sports discounters and does not enjoy a special reputation for high-end or high-quality goods.”
As the pricing and quality of each brand were near identical, there was no advantage or unfairness.
What does this mean?
This case seems to have turned on the low degree of similarity that the judge found between the trade marks and the alleged infringing use. While he acknowledged that both involve rhomboid shapes with an outer and inner dominant element and both sit on one angle, he said there were “multiple variances” such that the level of similarity was “very faint indeed”.
Umbro’s evidence about how the signs would be perceived, including from different angles, was not persuasive and the other factors in the infringement test could not outweigh this very low level of similarity.