Iconix (UMBRO brand owner) sued Dream Pairs for trade mark infringement, alleging their DP Sign on football boots was confusingly similar to UMBRO Trade Marks. The Supreme Court allowed Dream Pairs’ appeal, restoring the trial judge’s finding of no infringement, holding the Court of Appeal had no proper basis to substitute its own multi-factorial assessment.
Background
Iconix Luxembourg Holdings SARL (‘Iconix’) is the registered proprietor of the well-known UMBRO sportswear trade marks, which have been widely used on football boots in the United Kingdom since 1987. The appellants, Dream Pairs Europe Inc and Top Glory Trading Group Inc (together ‘Dream Pairs’), sold footwear bearing their ‘DP Sign’ logo via the Amazon UK and eBay UK websites from late 2018. Iconix brought proceedings for trade mark infringement under sections 10(2)(b) and 10(3) of the Trade Marks Act 1994, alleging the DP Sign was similar to the UMBRO Trade Marks and its use on footwear was likely to cause confusion on the part of the public.
At first instance, Miles J dismissed the claim, finding at most a very low degree of similarity between the marks and no likelihood of confusion. The Court of Appeal (Arnold LJ, Birss LJ, King LJ) reversed, concluding the judge’s finding on similarity was irrational when the DP Sign was viewed on footwear from angles other than square-on, and that the judge had committed errors of principle. The Court of Appeal conducted the multi-factorial assessment afresh, finding ‘a moderately high level of similarity’ in the post-sale context and a likelihood of confusion.
The Issues
The appeal to the Supreme Court raised three issues:
1. The Similarity Issue
Whether, at the stage of assessing similarity between the trade mark and the sign, the court may take into account how the sign is perceived in realistic and representative post-sale circumstances (e.g., viewed from head height on worn footwear), or whether similarity must be assessed solely on intrinsic features in a side-by-side comparison.
2. The Confusion Issue
Whether post-sale confusion can constitute actionable infringement under section 10(2)(b) even absent confusion at the point of sale or in a subsequent transactional context, or whether actionable infringement requires confusion affecting the essential origin function of the trade mark at the point of a subsequent sale or transaction.
3. Appellate Intervention
Whether the Court of Appeal was entitled to substitute its own multi-factorial assessment for that of the trial judge.
The Court’s Reasoning
The Similarity Issue
The Supreme Court, in a unanimous judgment delivered by Lord Briggs and Lord Stephens (with whom Lord Hodge, Lord Hamblen and Lady Rose agreed), rejected Dream Pairs’ submission that similarity must be assessed solely on intrinsic features in a side-by-side comparison, excluding post-sale viewing angles. However, the Court held this point was without merit on the facts because Miles J had already found faint resemblance on a side-by-side comparison, meaning a global assessment of confusion was required in any event, and Dream Pairs accepted that realistic viewing angles could be considered during the global assessment.
As a matter of principle, the Court held that realistic and representative post-sale circumstances can be taken into account for the purpose of establishing similarity. The Court analysed the CJEU’s decision in Equivalenza (Case C-328/18 P), concluding:
the CJEU in Equivalenza is authority for the proposition that at the stage of assessing similarity it is impermissible to consider post-sale circumstances in order to rule out intrinsic similarities between the signs at issue. It is not authority for the proposition that at the stage of assessing similarity post-sale circumstances cannot be considered to establish similarities between the signs at issue.
The Court gave five reasons for this conclusion, including that ruling out a global assessment where there was no intrinsic similarity but similarity existed in a realistic post-sale environment would run counter to the requirement for a global assessment where there is even a faint degree of similarity, and that the approach was consistent with the CJEU’s statement in Equivalenza at paragraph 71 that the comparison must be based on the overall impression made by the signs on the relevant public.
The Confusion Issue
The Supreme Court rejected Dream Pairs’ contention that post-sale confusion could only amount to actionable infringement if it affected or jeopardised the origin function at the point of a subsequent sale or transactional context. The Court agreed with Arnold LJ’s statement in the Court of Appeal:
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.
The Court analysed three key CJEU authorities—Arsenal Football Club plc v Reed (Case C-206/01), Anheuser-Busch Inc v Budějovický Budvar (Case C-245/02), and Ruiz-Picasso (Cases T-185/02 and C-361/04 P)—and drew three propositions from them:
(i) a trade mark continues to identify origin even after sale so that, in appropriate circumstances, it can give rise to infringement on the basis of a likelihood of post-sale confusion; (ii) perceptions of a sign post-sale leading to confusion as to origin are not limited to perceptions at the point of a subsequent sale or in a subsequent transactional context; and (iii) that ‘it can be relevant to take the post-sale context into account when considering trade mark issues’.
The Court identified six reasons for this conclusion, including: the non-exhaustive list of infringing uses in section 10(4) encompasses acts remote from any purchase transaction (such as advertising, affixing signs, importing); there is no mention of the point of purchase or transactional context in TRIPS or the Directives; and damage to the origin function is complete if an average consumer is confused about the origin of goods:
Damage to the origin function of a trade mark is complete if an average consumer is confused about the origin of goods. While other damage may well arise from that origin confusion (for example, direct damage to the proprietor’s economic interests through lost sales) no such further damage is required.
Appellate Intervention
Notwithstanding rejecting Dream Pairs’ main points of law, the Supreme Court held the Court of Appeal was not entitled to substitute its own assessment. The Court applied the principles from Lifestyle Equities CV v Amazon UK Services Ltd [2024] UKSC 8 and In re Sprintroom Ltd [2019] 2 BCLC 617, holding that an appeal court must identify a flaw in the judge’s treatment—such as a gap in logic, lack of consistency, or failure to take account of a material factor—and cannot simply substitute its own different view of the answer to a multi-factorial question.
The Court found that the judge had carefully dealt with and rejected submissions about viewing the DP Sign from different angles and the potential foreshortening effect (at paragraphs 138-139 and 141 of his judgment). The Court noted that the judge also considered that the DP Sign appeared not only on the side but also on the top of the boot, meaning as the side view became more acute, the top view became more square-on. On the supposed error regarding side-by-side comparison, the Court found this was not a fair summary of the judge’s approach, as he had explicitly addressed the DP Sign in use on footwear throughout his judgment.
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.
The Court concluded that the Court of Appeal appeared to have fallen into the trap of reasoning that the only explanation for the judge reaching a firm view differing from their own was that he must have made the errors of principle alleged by Iconix.
Practical Significance
This decision is significant in several respects. First, it clarifies that realistic and representative post-sale circumstances may be taken into account when assessing the similarity of a sign and a trade mark – not merely during the global assessment of confusion. Secondly, it confirms as a matter of UK law that post-sale confusion can constitute actionable trade mark infringement under section 10(2)(b) of the Trade Marks Act 1994 even in the absence of confusion at the point of sale or in a transactional context. No further damage beyond confusion as to origin is required. Thirdly, it reinforces the constraints on appellate courts when reviewing multi-factorial evaluative decisions in trade mark cases: an appellate court may not simply substitute its own assessment for that of the trial judge absent an identifiable flaw in the judge’s reasoning. The case also provides an authoritative analysis of the CJEU authorities on post-sale confusion and the assessment of similarity, including Equivalenza, Arsenal v Reed, Anheuser-Busch, and Ruiz-Picasso, and their continuing persuasive weight in UK law following Brexit.
Verdict: The Supreme Court unanimously allowed Dream Pairs’ appeal. While rejecting Dream Pairs’ two main points of law (on the similarity issue and the confusion issue), the Court held that the Court of Appeal was not entitled to substitute its own multi-factorial assessment for that of the trial judge, as Miles J had not committed any irrationality, error of principle or error of law justifying appellate intervention. The trial judge’s original decision dismissing Iconix’s claim for trade mark infringement was restored.
Source: Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc [2025] UKSC 25
