Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and another [2025] UKSC 25
The Supreme Court has issued its decision in Iconix v Dream Pairs, a case that raised important questions about the role of post-sale confusion in trade mark infringement under the Trade Marks Act 1994.
While the Court ultimately allowed the appeal in favour of Dream Pairs, it did so on procedural grounds, rather than rejecting the concept of post-sale confusion. In fact, the Court affirmed that post-sale confusion is a legitimate and relevant consideration in assessing the likelihood of confusion in determining a trade mark infringement action.
This follows recent discourse surrounding Thatchers v Aldi and the Colin the Caterpillar dispute between M&S and Aldi. In Thatchers v Aldi, the Court of Appeal found that Aldi’s “Taurus Cloudy Lemon Cider” took unfair advantage of Thatchers’ trade mark by intentionally evoking its distinctive packaging, even without direct consumer confusion. Meanwhile, the Colin the Caterpillar case was settled confidentially in 2022, but not before sparking widespread debate on the role of copyright in protecting brand identity. Before the M&S dispute was settled, M&S argued that even if consumers were not confused at the point of purchase, they might be misled after the sale - particularly at social events where the cake was served. This point has now been addressed by Iconix, and upheld by the Supreme Court.
These cases reflect a broader trend: courts are increasingly willing to consider the impression left on consumers - whether at the point of sale or beyond - as a relevant factor in infringement analysis.
Background
Iconix, owner of the well-known UMBRO brand, brought proceedings against Dream Pairs for allegedly infringing its “double diamond” trade marks. Dream Pairs had sold football boots in the UK bearing a logo which Iconix claimed was confusingly similar to its registered marks.
At first instance, the High Court dismissed the claim, finding a low degree of similarity and no likelihood of confusion. The Court of Appeal reversed that decision, holding that the trial judge’s assessment was irrational and that there was a “moderately high” similarity between the marks, particularly in a post-sale context - such as when the boots were seen on a player during a match.
Dream Pairs then appealed to the Supreme Court, challenging:
- whether post-sale similarity could shape the legal assessment; and
- whether post-sale confusion alone sufficed to prove infringement.
The Supreme Court’s Decision
The Supreme Court allowed the appeal, holding that the Court of Appeal had overstepped its role by substituting its own assessment for that of the trial judge, who had conducted a proper multi-factorial analysis.
Crucially, the Supreme Court confirmed that:
- post-sale confusion is relevant to the assessment of likelihood of confusion under the Trade Marks Act 1994;
- the relevant consumer is not limited to the purchaser but includes members of the public who encounter the product after sale; and
- a sign may infringe a trade mark even if confusion arises only after the point of sale, provided it affects the trade mark’s function as a guarantee of origin.
The Court reiterated that mere association - where a sign simply brings a trade mark to mind - is not enough. There must still be a likelihood of confusion.
Key Takeaways
This decision provides welcome clarity for brand owners. It confirms that trade mark protection extends beyond the point of sale and recognises the ongoing role of marks in the marketplace. For industries such as fashion and sportswear, where brand visibility post-sale is critical, this ruling should provide even more reassurance about taking action to stop infringement causing loss:
- post-sale confusion is a valid basis for trade mark infringement under UK law;
- Courts must assess confusion from the perspective of the average consumer, including those who see the product after purchase; and
- the case underscores the importance of careful factual analysis in trade mark disputes and that brand protection does not end at the checkout.
This article was co-authored by Gillian Murray, Trainee Solicitor in MFMac's Corporate & Commercial team.
