High Court gives Umbro the boot
Written by Samuel O’Toole | April 26, 2023
The recent case of Iconix Luxembourg Holdings Sarl v Dream Pairs Europe Inc and Top Glory Trading Group Inc [2023] EWHC 706 (Ch) has highlighted the importance of trade mark protection in the UK. The case centred around the alleged infringement of two trade mark registrations owned by the claimant, Iconix Luxembourg Holdings Sarl (who owns the Umbro brand) which protect various goods, including footwear. The defendants, Dream Pairs Europe Inc and Top Glory Trading Group Inc, were involved in the sale of footwear in the UK, using a logo that was alleged to infringe upon the Umbro trade mark registrations.
The High Court dismissed the claim of Iconix Luxembourg Holdings against Dream Pairs Europe and Top Glory Trading Group, finding that there was no likelihood of confusion among a significant proportion of the public interested in the goods in question. We’ve included the relevant marks at the end of this post.
The judge based this decision on the low degree of similarity between the Umbro Marks and the Dream Pairs Europe logo, the context on the relevant Amazon page, and the absence of any evidence of actual linkage by consumers. The judge also found that the claimant failed to establish any of the three types of injury required for a successful claim under section 10(3) of the Trade Marks Act 1994.
The case highlights the importance of trade mark protection in the UK. Trade marks are a form of intellectual property that can be used to protect a company’s brand and reputation. Trade marks are registered with the Intellectual Property Office (IPO) and can be used to prevent other companies from using a similar mark or logo. In this case, the claimant argued that the defendants’ logo infringed upon their trade mark registrations, while the defendants successfully argued that the average consumer would not perceive an overall similarity.
Businesses should ensure that they register their trade marks with the IPO to protect their brand and reputation but take care when enforcing them. All lawyers at Briffa are experts in the nuances of trade mark law, why not contact us for a free consultation.
Claimant (Umbro):
Dream Paris:
Written by Sam O’Toole – Associate
