Pannone x IHL Conference Q&A
Thank you to all who attended our annual IHL conference on 4 November 2025 hosted in partnership with BCL Legal Recruitment. To those who were unable to join us, we run this conference annually every Autumn and we look forward to seeing you at a future event.
We have been running this event for 13 years and have attendance from over 100 IHLs, and we are keen to continue growing these sessions. This year we had a competition law update from Nicholas Khan KC of Monckton Chambers, IP 'How close is too close?' and employment 'From Reform to Restriction' seminars and welcomed a guest speaker, Lee Castleton. Lee is a founding member of the Justice for Sub Postmasters Alliance (JFSA) and a victim of the Post Office scandal.
We’ve collated a few interesting Q&As that arose during the day which we hope are helpful and give you a flavour of the variety of discussions from this year’s event.
If there is anything you consider we can help with, have any further questions or want to highlight a topic of interest for next year, please drop a line to paul.jonson@pannonecorporate.com, sarah.bazaraa@pannonecorporate.com or emma.haymes@pannonecorporate.com.
One
Context:
We discussed the Umbro v Dream Pairs decisions coming out of the High Court, Court of Appeal and Supreme Court during the ‘How close is too close’ IP seminar.
The Supreme Court handed down a unanimous judgment on 24 June 2025 allowing the Dream Pairs appeal. This restored the High Court’s first instance decision that Dream Pairs did not infringe the Umbro trade mark.
Question:
Given the Supreme Court ruling in Umbro v Dream Pairs, do you think a judge would rule differently if presented with the same query now at first instance?
Answer:
The Supreme Court agreed with the Court of Appeal that when undertaking an assessment as to the likelihood of confusion between two brands, consideration must be given to the post-sale context. That increases the prospect of confusion because the mark and sign are being looked at in the real world, from different angles and perspectives, and without the company cues which may appear in a marketing context to dispel confusion.
The Supreme Court held that the High Court had properly taken that post-sale context into account and that it was entitled to dismiss the claims of infringement.
Assessments of likelihood of confusion are multi-factorial and nuanced. The Supreme Court acknowledged that reasonable judicial views might differ on issues of similarity. One can see why Umbro felt aggrieved at Dream Pairs’ brand choices. On the other hand, the High Court’s judgment in favour of Dream Pairs is rationally supportable. The Umbro brand is iconic because its elongated double diamond creates a distinct impression. Dream Pairs’ logo comprising a square shape with rounded corners is reminiscent of Umbro’s mark but even if revisited anew, we expect it would fall on just the right side of the line.
Two
Context:
A question that needs little context, but asked in the course of discussions during the ‘How close is too close’ IP seminar:
Question:
Why do you think Aldi get away with their dupes/copycat products so often?
Answer:
Aldi has embarked on a clear strategy to educate the market that it deals in copycats. It deliberately benchmarks its products against those of brand owners to signal to the market that its products are of the same quality but cheaper.
This makes claims for passing off incredibly difficult against Aldi because such claims require a brand owner to establish a likelihood of confusion. However, the reality is that customers are not confused – they see Aldi as dealing in cheeky imitations or dupes, which is not enough to get over the passing off hurdle.
Copyright infringement claims are also difficult because often what Aldi copies is the look and feel of a brand, rather than substantially reproducing the exact graphic design of packaging.
The answer for brand owners is to register key packaging designs as trade marks. This is because the most powerful cause of action for a brand owner against Aldi is likely to be a trade mark infringement claim under section 10 (3) of the Trade Marks Act 1994. That type of claim does not require a brand owner to establish a likelihood of confusion or to show a substantial reproduction of a graphic work. Instead, it entitles a trade mark owner to prevent Aldi from using a similar brand, where that leads to consumers making a link with the trade mark and which damages the trade mark or leads to Aldi securing an unfair advantage. Thatchers recently succeeded in this type of claim against Aldi in relation to the packaging design of cider products.
Three
Context:
In the context of avoiding the common pitfalls in post-termination restrictions.
Question:
How can we improve restrictive covenants?
Answer:
Employers unfamiliar with restrictive covenants often view them as one provision whereas the reality is restrictive covenants is an umbrella term for a number of differing types of restrictions including non-compete, non-solicitation/dealing and non-poaching clauses.
- It is a worthwhile task for employers to carefully consider what clauses they require and in what format or duration these are best expressed. It may be that some clauses need to be longer in duration than others or some may even not be required at all e.g. a HR Manager may not need clauses preventing them stealing clients. Bespoke restrictions will always fare better in front of a judge in contrast to simply including ‘off the shelf’ restrictions in a standard format and duration.
- In particular, overly long restrictions can be counter-productive because they will be more open to challenge and may well be more likely to be ignored by a sophisticated ex-employee who has sought legal advice. The High Court in Quilter Private Client Advisers Ltd v Falconer [2020] EWHC 3294 held that an ex-employee’s restrictions were invalid. Six and nine month post-termination restrictions were held to be unreasonable for an employee who had only been in post for two months and was still in their probationary period with a notice period of only two weeks. Staged restrictions can often be useful that increase with service.
- The Court of Appeal gave its judgement in the case of Office Angels v Rainer-Thomas and O'Connor [1991] IRLR 214 over thirty years ago, but it included a principle that we still see overlooked all too commonly. Where restrictive covenants set out the interests the employer is seeking to protect in a preamble to those restrictions, if the clause preamble fails to list the specific legitimate interest the employer is now seeking to protect, this is an absolute bar on the clause being enforced. Employers therefore need to be very careful that they either don’t include a preamble or that where they do, they specifically refer to each and every legitimate interest they may want to protect. Common examples of such legitimate interests are confidential information, customer connections and a stable workforce.
- Remember shareholder restrictions. Senior employees who are given benefits such as shares, share options or even other forms of long-term incentive benefits, more onerous and lengthier restrictive covenants are often enforceable and it is not unusual to see restrictions upheld as long as the duration of the shareholding.
- The historical House of Lords case of General Billposting v Atkinson [1909] AC 118 set down the principle that if an employer is in repudiatory breach of contract, then it can no longer rely on any aspect of that contract, including in an employment context, any restrictive covenants. This means that commonly employees will argue they are no longer bound by restrictions because they have been constructively dismissed or wrongfully dismissed (i.e. not paid their correct notice). It is always more beneficial for employers who are keen to rely on post-termination restrictions to therefore make sure they remove any such arguments by paying any sums that are still contractually owed.
Four
Context:
We were privileged to be joined by Lee Castleton, a founding member of the Justice for Sub Postmasters Alliance (JFSA) and a victim of the Post Office scandal.
Lee was portrayed in the 2024 ITV drama by actor Will Mellor and provided us with a fascinating account of his experience in the High Court.
Question:
The Post Office appointed Bond Dickinson and Richard Morgan (now KC). What was your experience representing yourself and the sub postmasters in the High Court.
Answer:
I felt very alone in the court. I couldn’t believe it had got to this point. I felt I had done nothing wrong at all. I had run out of money and couldn’t afford lawyers. The High Court is a lonely place when you are on your own. Litigation procedure is not easy. I have had to learn a lot during the course of the process.
Five
Context:
In the Post Office’s original pursuit against the sub postmasters, it successfully secured an award for £26,000 against Lee, plus £321,000 in legal costs.
We wanted to know if Lee understood the rationale behind the Post Office’s, clearly disproportionate, quest.
Question:
Why do you think the Post Office spent £321,000 in legal fees, to recover a £26,000 award against you?
Answer:
It was all about the Post Office showing it had the power to impose their will. They weren’t listening to the sub post masters and needed to show they were right. I went bankrupt as a result of the judgment.
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