The decision, announced today by the Supreme Court’s Lord Hodge, Lord Briggs, Lord Hamblen, Lord Stephens and Lady Rosekey, will set a precedent for trademark law and the issue of post-sale confusion.
Brand management group Iconix, which acquired Umbro in 2012 from Nike, sued Dream Pairs in July 2022 for trademark infringement for using a double-diamond logo on their sports footwear products that was “confusingly similar” to Umbro’s trademark symbol.
Iconix’s claim was dismissed by the England and Wales High Court in 2023 and the company subsequently appealed to the England and Wales Court of Appeal, which in turn ruled “a likelihood of confusion [between the two trademarks] on the part of a significant proportion of consumers”.
The Court of Appeal’s decision was appealed by Dream Pairs to the Supreme Court on 5 March 2024.
Although today’s decision means that Umbro “ultimately lost this case”, the Supreme Court “made it very clear that post sale confusion can be taken into account in trademark infringement case”, said Lee Curtis, partner and chartered trademark attorney at IP law firm HGF.
“This is a key finding in the world of fashion. Post sale confusion is the situation where a third party is confused after the sale of a product, for example when they see someone walking down the street and see a logo on a piece of clothing worn someone else.
“Logos and designs are often key brand elements for fashion brands and consumers are often influenced by what they see their friends, others or indeed people on the street wearing,” he added.
In January 2024, high street fashion retailer Superdry requested an “injunction to restrain” Manchester City from using the words “Super ‘Dry’ Asahi 0.0%” on the football club’s men’s and women’s team training kits.
The trademark dispute was settled in February 2024, with both parties reaching a mutual agreement to resolve it before the trial reached the High Court,.
Drapers has contacted Umbro for comment.
