Umbro loses court appeal against Dream Pairs in logo IP case

Umbro parent Iconix is on the losing side of a UK Supreme Court appeal in a what’s seen as a landmark fashion intellectual property (IP) case.

The UK sportswear brand’s owner sued Dream Pairs in 2021 for selling shoes featuring a double-diamond logo (the DP sign) that it said was confusingly similar to Umbro trademarks. 

But the Court unanimously dismissed Iconix’s claim, finding that there was a very low degree of similarity between the signs and no likelihood of confusion.

But while the ruling went against Iconix/Umbro, the result affirmed that post-sale circumstances can be taken into account when assessing similarity in a case where Iconix had accused fashion footwear brand Dream Pairs of trademark infringement.

This is the first time the court has addressed the issue of post-sale confusion in trademark infringement, and reports said the decision has important ramifications for anyone managing IP and brand strategy, particularly in consumer-facing sectors like retail, fashion and sport.

The initial case found that there was a “moderately high level of similarity” between the logos in the post-sale context, particularly when the DP sign was viewed on a football boot by a viewer standing nearby and looking down at it. But the higher court called the earlier ruling “irrational”. 

Despite losing the case, Andy Lee, partner and head of IP at Brandsmiths representing Iconix said: “This judgment is positive for brand owners. The court confirmed that trademarks have an important ongoing role and existence after sale and should be appropriately protected recognising the value of brands and the work that goes into establishing them.”

Lee added that the judgment reiterates that when considering such multi-factorial assessments, “appeal courts should be slow to interfere on the basis of their own views if the first instance judge has carried out a proper assessment. This may lead to less appeals being heard in certain cases and therefore the first instance trial result becomes even more important”.

The Umbro trademarks have been widely used on football boots in the UK since 1987.  The DP sign was designed and created in 2015 and used as a US trademark by Dream Pairs in relation to footwear. Since 2018, Dream Pairs has, via the Amazon UK website and to a lesser extent the eBay UK website, sold a variety of footwear branded with the DP sign in the UK.