This case involved the question of whether the well known UMBRO logo (the “668 Mark” below left) owned by Iconix was infringed under s.10(2) TMA (likelihood of confusion) by Dream Pairs use of the “DP Sign” (below centre alongside an example of footwear bearing the DP Sign). 

At trial, Iconix’s claim was dismissed, with the trial judge finding there was at most only a very faint degree of similarity between the 668 Mark and the DP Sign and there was no likelihood of confusion, whether at the point of sale or in the post-sale context.

Iconix appealed to the Court of Appeal (“CoA”). The CoA upheld the appeal on the basis the trial judge had reached an irrational conclusion in finding there was only a very faint degree of similarity because he had not properly considered the DP Sign when viewed at an angle from above (such that it would appear foreshortened) on a pair of shoes worn by someone else (i.e. in the post-sale context). The CoA therefore conducted its own evaluation, finding that there was moderately high degree of similarity between the mark and sign, and there was a likelihood of confusion as a result.

Dream Pairs appealed the CoA’s judgment to the Supreme Court (“SC”), which handed judgment ([2025] UKSC 25) on 24 June 2025.

The first issue for the SC was whether, at the stage of assessing whether the mark and sign are similar, the court should only consider the intrinsic features of the sign when assessing the degree of mark and sign similarity; or also take into account extraneous circumstances, such as how the goods bearing the sign are marketed or subsequently perceived, including any realistic and representative viewing angles in the post-sale environment. The SC held here that realistic and representative post-sale circumstances could be taken into account when assessing the degree of similarity of the mark and sign.

The second issue was whether confusion in the post-sale context could form the basis of an infringement finding even where it did not jeopardise 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. The SC regarded the UK and EU authorities as supporting the proposition that use of a sign could 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 SC emphasised here that a trade mark continues to identify origin even after sale. The SC further found that damage to the origin function of a trade mark is complete if an average consumer is confused about the origin of goods, irrespective of when that confusion occurs. 

Finally, the SC considered whether the CoA was entitled to interfere with the trial judgment. The SC noted that the assessment of trade mark infringement under section 10(2) was a classic example of a multi-factorial evaluation, in which the appellate court would only be entitled to interfere if there was an irrational conclusion or an error of law or principle. It was not enough for the appellate court simply to believe they might have arrived at a different conclusion.

Having carefully reviewed the trial judgment, the SC found that the trial judge had given careful consideration to the post-sale context and to the effect of an angled view of the DP Sign, but did not regard those considerations as detracting from his conclusion about faint similarity or unlikelihood of confusion. Given that he had not fallen into error or reached an irrational conclusion, there was no basis for the CoA substituting its own assessment for that of the trial judge.

SC therefore allowed Dream Pairs’ appeal.

Remarks

The Supreme Court’s judgment will be broadly welcomed by trade mark owners, but it does raise some uncertainties.

Whilst taking the context of use of a sign into account for the purposes of the global assessment of likelihood of confusion is nothing new, we may now see more arguments arising in trade mark cases about the various “real and representative circumstances” in which the sign might be perceived. A sign which might appear similar to a particular degree to a mark when viewed square on, may become much more (or less) similar when viewed at an angle, from a distance, partially obscured, scrunched up or whatever other perspective might be said to be “real and representative” one for that particular type of goods. Importantly, how the sign appears on goods in “real and representative” circumstances in the post-sale context may well be outside of the alleged infringer’s knowledge or control. 

Because all “real and representative circumstances” of how the sign is perceived must now be taken into account, the scope for a finding of likelihood of confusion is greater. That may make it easier for trade mark owners seeking to enforce their marks, but also easier to oppose a new application on likelihood of confusion grounds. So good news for trade mark owners, but bad news for new market entrants. 

On the post-sale confusion issue, it is perhaps no great surprise that post-sale confusion was recognised by the SC as a possible basis for 10(2) infringement given that, as the SC noted, trade marks continue to fulfil their function even after sale. However, the UKSC has also found that there is no reason in principle for imposing a limitation that only post-sale confusion jeopardising 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” can amount to an actionable infringement. Relatedly, they also held that damage to the origin function of a trade mark is complete if an average consumer is confused about the origin of goods – without there being any further damage caused such as lost sales. This appears to mean that the court can find 10(2) infringement on the basis of post-sale confusion even where there is no actual effect on trade – no actual damage to the trade mark owner or consumer, nor actual advantage to the defendant. 

The point on which the appeal succeed however was, in the end, a rather straightforward one: the trial judge’s analysis and conclusions on likelihood of confusion were entirely reasonable (even if another judge might have reached a different conclusion), and so the Court of Appeal simply had no basis to interfere. The SC’s judgment is therefore a timely reminder that an appeal is not simply a second bite of the cherry. 

For a more detailed review of the SC judgment please see here.

Bird & Bird acted for Dream Pairs before the Supreme Court