27/06/2025
A recent decision of the UK Supreme Court is good news for trade mark owners, as it has maintained that post-sale confusion may be relevant in UK trade mark infringement proceedings.
The Supreme Court is the final court of appeal in the UK for civil cases (and for criminal cases from England, Wales and Northern Ireland). When hearing an appeal, the Supreme Court does not re-hear the whole case but only considers whether the first instance judge or Court of Appeal has made a mistake in law. Appeals to the Supreme Court are limited to appeals on questions of law, and only those which raise issues of general public importance.
It is comparatively rare for trade mark disputes to reach the level of the Supreme Court, but there were important points of principle in this case.
On 24 June 2025, the Supreme Court handed down its judgment in the case of Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and another [2025] UKSC 25.
Iconix is the owner of well-known sportswear brand Umbro and owns UK registrations of “Diamond” Logo marks, registered for articles of sports clothing and the like (“the UMBRO Marks”). Dream Pairs had sold a variety of footwear bearing the “DP Logo”.
Iconix brought an action for infringement against Dream Pairs under Section 10(2) of the Trade Marks Act 1994, which states that:
“A person infringes a registered trade mark if he uses in the course of trade a sign where because….
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.”
Iconix claimed that the DP Logo was similar to their own Umbro Marks and that its use on footwear, in particular on football boots, was likely to cause confusion on the part of the public.
In 2023 the High Court dismissed Iconix’s claim, finding that there was “a very low degree of similarity” between the UMBRO Marks and the DP Logo and that there was no likelihood of confusion.
Iconix appealed successfully. When deciding on an appeal, the Court of Appeal does not re-hear the entire case; it reviews the proceedings and decision of the lower court for legal errors or serious misdirections.
On this occasion, the Court of Appeal found that the High Court judge’s conclusion that there was a very low degree of similarity was “irrational” when the DP Logo was considered as viewed from any angle other than simply square-on. The Court of Appeal held that there was “a moderately high level of similarity” between the UMBRO Marks and the DP Logo in the post-sale context. The example was given of the DP Logo as viewed on a football boot by a viewer standing nearby and looking down at it. The Court of Appeal concluded that there was a likelihood of confusion on the part of a significant proportion of consumers.
Dream Pairs appealed to the Supreme Court, which unanimously allowed the appeal and reinstated the decision of the first instance judge.
The Supreme Court held that the Appeal Court had erred in finding the High Court judge’s conclusion about the degree of similarity to be “irrational”, which amounts to saying that no reasonable judge could have reached the same conclusion. In their judgment, the Supreme Court commented:
“We would readily acknowledge that reasonable judicial views might differ on this issue about similarity when viewed from an angle, but our task is not to form our own view, unless both the judge and the Court of Appeal made what may loosely be called appealable errors. It is enough for us to say that, whether we would or would not have agreed with the judge’s assessment, his was by no means irrational.”
Dream Pairs had also argued that post-sale confusion can only amount to an actionable infringement if it affects or jeopardises the essential function of a trade mark as a guarantee of origin at the point of a subsequent sale or in a subsequent transactional context.
While their appeal succeeded, the Supreme Court did not agree with Dream Pairs’ arguments relating to post-sale confusion. In their judgment, the Supreme Court agreed with Lord Justice Arnold, who was one of the judges in the case before the Appeal Court and who had stated that:
“… it is possible in an appropriate case for use of a sign to give rise to a likelihood of confusion as a result of post-sale confusion even if there is no likelihood of confusion at the point of sale.”
Even though the main points of law put forward by Dream Pairs were rejected, the Supreme Court allowed the appeal. This was because they found that in making his decision the High Court judge had not reached an irrational conclusion or made an error of principle or of law which justified the Court of Appeal in overturning the initial decision.
Although bad news for Iconix, the decision of the Supreme Court is good news for trade mark owners generally. It shows that post-sale confusion may be taken into account in trade mark infringement cases and, by extension, in other actions such as oppositions. Assessment of a likelihood of confusion will not depend solely on a side by side comparison marks and on the potential for confusion at the point of original sale or subsequent re-sale. How a mark will be perceived in its post-sale environment is part of the overall impression made by the mark to the relevant public.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
