Supreme Court judgments in IP cases are normally few and far between, but we’ve been spoiled recently with decisions on targeting, directors’ liability, and bad faith trade mark filings. On 17-18 March 2025, another very interesting trade mark case is going before the Supreme Court, this time on the issue of post-sale confusion in trade mark infringement cases.

The Facts

The origins of the case are relatively straightforward, with little to indicate that it would eventually raise issues warranting review by the Supreme Court. In July 2022, Iconix, the owner of the well-known UMBRO trade mark, sued Dream Pairs (a shoe manufacturer) for trade mark infringement in relation to their use of the Dream Pairs logo (shown below – the “DP Logos”) on certain footwear.

Iconix alleged infringement on two grounds: section 10(2) likelihood of confusion and section 10(3) (the enhanced protection grounds for trade marks with reputation).

High Court Decision

The case came to trial before Miles J in March 2023. On the likelihood of confusion assessment, the judge concluded that:

• The mark and sign only had a very low degree of visual similarity.
• The respective goods in question were, however, identical or similar.
• The average consumer would be reasonably observant about branding, aware that there were a great many different brands for footwear, and would pay a moderate degree of attention.
• The Umbro trade mark had acquired distinctiveness through extensive use.
• The Amazon pages through which the DP Logo footwear was sold showed that Dream Pairs was its own brand.

Weighing all the relevant factors, the trial judge concluded that there would not be a likelihood of confusion amongst a significant proportion of the relevant public, and so there was no infringement under section 10(2). The judge also noted that the same conclusion applied to post-sale confusion as point-of-sale confusion: there was no likelihood of it occurring.

Iconix also failed to establish infringement under Section 10(3): Iconix had failed to prove that any of the three types of injury required for 10(3) had occurred.

Iconix then appealed against the finding of non-infringement under Section 10(2) to the Court of Appeal.

Court of Appeal Decision

In its judgment of 26 January 2024, the Court of Appeal (with the leading judgment given by Arnold LJ) reversed the trial judge’s finding and held there was infringement under Section 10(2).

Arnold LJ took the view that the trial judge’s finding that the mark and sign were only very faintly similar was “rationally insupportable” when the sign was viewed from angles other than square on. He also considered that the trial judge had failed properly to consider the impact of the DP Logo on consumers who may have never seen the graphical representation of the DP logo before but encountered it for the first time in the post-sale context, such as when looking down at an angle at footwear bearing the DP Logo worn by another person (when it would appear “more foreshortened” through the operation of perspective).

The Court of Appeal found that this was a realistic and representative scenario for assessing post-sale use of the DP Logo upon the perception of the average consumer. As they considered the trial judge had failed to properly consider this scenario, it was open to the Court of Appeal to re-evaluate the likelihood of confusion for itself. In doing so, it concluded that in the context of the post-sale scenario described above, the mark and sign had a moderately high level of similarity, and there was therefore a likelihood of confusion and therefore infringement under Section 10(2).

Importantly, the Court of Appeal’s re-evaluation of likelihood of confusion was based only on a similarity assessment conducted in one particular post-sale scenario in which the DP Logo is seen by a third-party bystander from an angle from above on footwear worn by someone else. The Court of Appeal did not interfere with the trial judge’s finding that there was no confusion at the point of sale.

Appeal to the Supreme Court

Dream Pairs sought permission to appeal against the Court of Appeal’s judgment to the Supreme Court. By granting permission, the Supreme Court has acknowledged that the appeal raises issues of general public importance.

The appeal is scheduled to be heard by the Supreme Court on 17-18 March 2025 and will be live-streamed.

The Supreme Court will need to consider the following important questions:

What is to be taken into account when considering the similarity of the mark and sign? Is it permissible to conduct the similarity of mark/sign assessment based on the perception of the sign when viewed from one particular angle/viewpoint? Put another way, is it permissible to exclude other viewpoints from which the average consumer might also encounter the sign, including seeing the sign square on? A sign when viewed from an angle, or at a distance, or partially obscured, may appear different to what it actually is (a circle viewed from an angle appears as an oval, etc.). Some signs will therefore appear more similar to the mark when viewed in such a way, and other signs will appear more different to the mark.

What is the proper role of post-sale confusion in the assessment of trade mark infringement? Confusion may arise post-sale which then persists through to the point at which a consumer subsequently makes a purchasing decision whilst still confused, but that would then be confusion at the point of sale. Post-sale confusion should therefore be regarded as transient confusion, arising in the post-sale context but which is dispelled by the time of any subsequent purchasing decision. Post-sale confusion could therefore be seen as the same as, or at least overlapping with, the concept of ‘initial interest confusion’ which has previously been rejected by the Court of Appeal in Interflora v M&S (at least in the context of online keyword advertising). Evidence of post-sale confusion may be relevant to the question of whether the average consumer forms a ‘link’ between the mark and the sign for the purposes of Section 10(3), but is post-sale confusion alone a sufficient basis for a finding of infringement under Section 10(2)?

Did the Court of Appeal stray beyond its appellate role in interfering with the trial judgment? If the Supreme Court takes the view that the trial judge did in fact properly consider the mark/sign similarity assessment and the role of the post-sale confusion (whatever that may be), then it may conclude that the Court of Appeal should not have interfered with the trial judgment in any event.

Final Remarks

Whatever the Supreme Court decides, the judgment will have important ramifications for trade mark owners and users. If transient (perhaps only fleeting), post-sale confusion by a third-party bystander (i.e., absent any confusion at the point of sale) is a sufficient basis for a finding of Section 10(2) infringement, then consideration of scenarios outside of the normal transactional context will become relevant. Likewise, if similarity of the mark and sign can be assessed by reference to the sign as viewed from a particular angle, distance, or with some other distortion, the similarity assessment becomes harder to conduct, with potentially multiple different perspectives of the sign needing to be considered.

Bird & Bird act for Dream Pairs in this case. The team is led by Ewan Grist (partner) with support from Louise Sargeant, Georgina Straughan, and David Pemberton.