We take a look at a couple of trade mark decisions involving large sportswear brands Adidas and Umbro which help to clarify when similarity causes confusion in the eyes of the consumers.
Adidas v Thom Browne
Position marks are trade marks that include an illustration showing how a design is intended to appear on a specific product.
Adidas has a number of position marks to protect its well-known three-strip pattern, However, last year, Thom Browne Inc (“TB”) applied to invalidate some of these marks on the grounds that the way the designs would be used on products was unclear.
TB is a luxury fashion brand that uses four asymmetrical bars on a variety of their products, and they applied to invalidate the trade marks held by Adidas so they could register their design. In response, Adidas issued a counterclaim for the infringement and passing off in relation to TB’s four bar design.
The Court of Appeal has recently upheld the High Court’s 2024 decision to dismiss Adidas’ counterclaim, finding no likelihood of confusion between the designs. While the marks to which the case related have been struck down, Adidas retains its other three-stripe registrations. In coming to its decision the Court held that the average consumer would be able to distinguish between the number of stripes (three versus four) and the overall appearance of the designs, including their width and spacing. This conclusion was supported by the fact that both brands had coexisted for several years without any evidence of actual consumer confusion.
Iconix v Dream Pairs
Earlier this year, the Supreme Court considered the similarity between the designs of Iconix (owner of the Umbro brand) and Dream Pairs.
Iconix owns registered logo trade marks for Umbro’s “double diamond” design, which appears on various sports products. They brought a claim against Dream Pairs for trade mark infringement, alleging that Dream Pairs’ stylised diamond logo, used for the sale of footwear, was too similar and would cause confusion in the minds of consumers.
The High Court initially dismissed the claim, finding only a low degree of similarity between the logos. However, the Court of Appeal later overturned this decision, ruling that there was a moderately high level of similarity when the products were viewed post-sale.
The matter was then appealed to the Supreme Court, who overturned the Court of Appeal’s decision and found that Dream Pairs had not infringed Umbro’s trade marks.
The Supreme Court reached this decision by recognising that it is not common for consumers to see two similar brands side by side, so similarity should be assessed based on the average consumer’s memory of the designs. The Court also confirmed that while Dream Pairs did not infringe the Umbro marks, the post-sale context remains relevant when assessing similarity, as it reflects how designs are encountered in the real world.
Our comments
It is important to remember that trade marks are not meant to give the owner an unfair monopoly right over a design. Therefore, it is sensible to assess the degree of similarity between two marks in the context of how they are used in practice and whether a consumer would confuse the two if they were not side by side at the time of sale.
Owners of registered trade marks should bear this in mind before starting costly opposition proceedings, especially where the trade mark is formed of relatively simple elements (such as lines or shapes).
If you have any questions as a result of this article or would like to know more about how to protect your own brand names and logos, please contact [email protected]
