Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and another

Realistic and representative post-sale circumstances may be considered when deciding whether a sign is similar to a registered trade mark and assessing the degree of similarity. Such circumstances may establish similarity, although they cannot eliminate intrinsic similarities between the sign and mark.

Post-sale confusion may constitute infringement even without confusion at the point of sale or in a later transactional context. Damage to the origin function is complete when the average consumer is confused about the goods’ origin; further economic damage is unnecessary.

An appellate court may reconsider a trial judge’s multifactorial evaluation only where an identifiable flaw, such as faulty logic, inconsistency or omission of a material factor, undermines the conclusion. A different preferred evaluation does not suffice.

Iconix owned two registered UMBRO device marks and alleged that Dream Pairs infringed them by using a logo on footwear. The claim was brought under sections 10(2) and 10(3) of the Trade Marks Act 1994.

Miles J dismissed the claim in [2023] EWHC 706 (Ch); [2023] RPC 15. He found no more than a very low degree of similarity and no likelihood of confusion, including post-sale confusion. The Court of Appeal allowed Iconix’s appeal in [2024] EWCA Civ 29; [2024] RPC 10. It found errors in the judge’s treatment of angled, post-sale views and substituted findings of moderately high similarity and likely confusion.

The Supreme Court considered whether realistic post-sale circumstances could establish similarity, whether actionable post-sale confusion required a transactional connection, and whether the Court of Appeal was entitled to remake the trial judge’s multifactorial assessment.

1. Appeal allowed. Lord Briggs and Lord Stephens delivered the unanimous judgment, with which Lord Hodge, Lord Hamblen and Lady Rose agreed. Although Dream Pairs’ principal propositions of trade mark law were rejected, the trial judge had made no appealable error. The Court of Appeal was therefore not entitled to substitute its evaluation.

2. Realistic and representative post-sale circumstances may be considered when establishing whether a sign and mark are similar and when assessing their degree of similarity. European Union Intellectual Property Office v Equivalenza Manufactory SL did not prohibit that approach. It established that marketing or post-sale circumstances cannot be used to rule out intrinsic similarities. It did not decide that such circumstances cannot establish similarity. Restricting the inquiry to intrinsic similarity could improperly prevent the required global assessment where similarity appears only in a realistic post-sale view.

3. Use of a sign may cause actionable post-sale confusion under section 10(2)(b) of the Trade Marks Act 1994 even though confusion is absent at the point of sale. The confusion need not affect a later purchase or other transactional decision. A trade mark continues to identify origin after sale, including to third parties who encounter the goods. Arsenal Football Club plc v Reed, Anheuser-Busch Inc v Budějovický Budvar and Ruiz-Picasso supported the relevance of that context.

4. The exclusive right protects the functions of the mark. Damage to its origin function is complete when an average consumer is confused about the goods’ origin. Lost sales or other additional economic damage need not be proved. The varied uses listed in section 10(4), many remote from any sale, also contradict a transaction-only limitation.

5. A determination of similarity and confusion under section 10(2)(b) is a multifactorial evaluation. An appellate court must identify a flaw in the trial judge’s treatment of the issue, such as a gap in logic, inconsistency or failure to consider a material factor. It cannot repeat the balancing exercise merely because it would have reached another conclusion.

6. Miles J had considered the logo from different angles, in use on footwear, through the eyes of an average consumer relying on imperfect recollection, and in the post-sale context. His conclusions of very faint similarity and no likelihood of confusion were open to a reasonable judge. Neither irrationality nor an error of law or principle justified appellate intervention. His dismissal of the infringement claim was restored.

1. United Kingdom Supreme Court: Allowed Dream Pairs’ appeal in [2025] UKSC 25. It held that the Court of Appeal had not been entitled to replace the trial judge’s multifactorial evaluation and restored the dismissal of the claim.

2. Court of Appeal: In [2024] EWCA Civ 29; [2024] RPC 10, allowed Iconix’s appeal. It remade the assessment and found infringement under section 10(2)(b) of the Trade Marks Act 1994, with the section 10(3) claim following that result.

3. High Court, Chancery Division: Miles J dismissed both infringement claims in [2023] EWHC 706 (Ch); [2023] RPC 15. He found only very faint similarity and no likelihood of confusion, including post-sale confusion.