Court of Appeal reverses trial judge in  “double diamond” Umbro logo case; post-sale confusion prevails (again)

26 January 2024: The Court of Appeal today gave judgment in Iconix v Dream Pairs reversing the trial judge, Miles J, and holding UMBRO’s famous “double diamond” logo to be infringed by the footwear logo used by Dream Pairs.

The trial judge, Miles J, had dismissed Umbro’s claim, holding that there was no likelihood of confusion, focusing in particular on photographs of the footwear in Amazon listings.

On appeal,  Umbro argued that the Judge had wrongly compared the marks, over-analysing elements within them, and had failed properly to consider post-sale confusion – i.e. confusion of consumers who may first encounter the Dream Pairs sign not at the point of purchase but when being worn by another person who had purchased them, typically looking down at an angle at their feet. That perspective resulted in a flattening of the Dream Pairs logo, making it more like Umbro’s.

Allowing the appeal, Arnold LJ noted that the doctrine of post-sale confusion was now well established (referring by way of example to the recent Samsung v Swatch appeal in which he gave the leading judgment). Moreover it was right to consider the post- sale context where significant numbers of consumers typically first encounter trade marks in that way for those goods.

The case illustrates the protection afforded to iconic marks like Umbro’s double diamond. It also contains lessons for those adopting or clearing new trade marks in that they need to consider not just a side by side comparison but real world use in typical contexts, including the post-sale context.

Simon Malynicz K.C. and Tom St Quintin acted for the successful appellants, Iconix (Umbro), instructed by Brandsmiths.