Court of Appeal finds likelihood of confusion based on post-sale confusion

What has happened?

The Court of Appeal has overturned a decision of the High Court and held that there is a likelihood of confusion between two device marks based on post-sale confusion. This - and other recent decisions - might suggest that the Court is particularly receptive to arguments based on the post-sale context at present. 

What was the alleged infringement?

The appeal concerned whether the use of the sign (depicted twice on the left below) by the defendant for footwear infringed the Claimant's (Umbro) trade mark (depicted on the right below), registered for footwear.

What did the High Court decide? 

Despite the identicality of goods and the enhanced distinctive character (through use) of the earlier mark, the judge held that there was no likelihood of confusion due to the very low level of similarity between the mark and sign (which he deemed "very faint indeed"). This applied even if the sign was viewed at an angle (not square on) and in a post-sale context (such as use on muddy football boots).

The judge also referred to the context of use (sales through Amazon UK where the defendant's name was mentioned but not the claimant's) as mitigating against infringement, although this was not decisive (see our article). 

What did the Court of Appeal rule?

It overturned the High Court decision on the basis that:

• The judge was wrong to say that the P-like form in the middle of the sign was “the distinctive and dominant element of the logo.” These factors are only relevant when assessing a composite mark or sign. 
• The judge’s conclusion that the similarity between the mark and sign was only “very faint” was rationally insupportable when the sign was affixed to footwear and viewed from other angles and was doubtful even when viewed square on. However, the judge's conclusion was rationally supportable when comparing the sign and mark as graphic images (not on footwear). 
• The judge had erred in principle when considering the post-sale context in two ways. First, he had not taken into account that the average consumer encountering the sign for the first time affixed to eg football boots, would not know what the sign looked like when represented graphically or when viewed square on (ie they would not have the benefit of a side-by-side mark for sign comparison). Secondly, he had not considered that they might only see it looking down. In these circumstances, the sign would appear more like a double diamond (as per the claimant's mark). The Court commented that there is nothing artificial or unrealistic about this comparison; it is a realistic and representative scenario for assessing post-sale confusion. 
• There would be a likelihood of confusion when the sign is affixed to footwear in the post-sale context. Here, there is a moderately high level of similarity between the mark and the sign, particularly given imperfect recollection. 

The ruling illustrates the importance of considering post-sale confusion and use when clearing new brands and assessing infringement risks. It follows the same Court's ruling in Montres Breguet v Samsung (watch face apps) last week, which also turned on post-sale infringing use.