Supreme Court tackles viewing angles and post-sale confusion in trade mark infringement case

Why should I read this?

On 24 June 2025, the UK Supreme Court delivered its judgment in the case of Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and another. This pivotal case, centred on trade marks used on football boots, raises two critical issues of trade mark law: the importance of viewing angles when assessing similarity and the role of post-sale confusion as a basis for infringement. Additionally, the judgment explores the circumstances under which appellate courts can substitute their own decisions for those of trial judges. This article delves into the background of the case, the legal arguments presented, and the implications of the Supreme Court's decision for brand owners and the broader legal landscape.

Background

Iconix Luxembourg Holdings Sarl (Iconix) is the owner of the well-known sportswear brand UMBRO and the registered proprietor of the UMBRO “double diamond” trade marks (the Marks).  These marks have been widely used on sportswear and football boots in the UK since 1987:

 

Dream Pairs Europe Inc and Top Glory Trading Group Inc (collectively Dream Pairs) sell a variety of footwear, including football boots branded with a tilted square with a ‘P’ shape within (the Sign):

  

Infringement under section 10(2) of the Trade Marks Act 1994 (TMA) requires the sign used by a defendant to be similar or identical to the claimant’s registered trade mark in relation to similar or identical goods and for this to bring about a likelihood of confusion on the part of the public. Infringement under section 10(3) requires the trade mark to have a reputation in the United Kingdom and for the use of the sign, being without due cause, to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the trade mark.

In 2023 the High Court judge held that there was no trade mark infringement under section 10(2) on the basis that there was a very low degree of visual similarity (both when viewed side by side and from realistic and representative viewing angles such as looking down at a boot) and no likelihood of confusion, as well as dismissing the claim under section 10(3). 

Iconix appealed this judgment to the Court of Appeal, which overturned the High Court judgment and held that there had been infringement.  The Court of Appeal felt the trial judge had made several errors such that it should conduct the multi-factorial assessment of similarity and confusion afresh.  It held that there was infringement under section 10(2) as it felt there was a moderately high degree of similarity and a likelihood of confusion of a significant proportion of consumers. 

Dream Pairs then appealed to the Supreme Court on the three points set out below. 

The issues raised on appeal to the Supreme Court

1. What is the relevance of viewpoint when assessing existence and degree of similarity?

One of Dream Pairs’ grounds of appeal was that extraneous circumstances, such as how the goods are marketed or subsequently perceived, should not be taken into account when assessing whether the Sign and the Mark are similar, and if they are similar, to what degree.   They argued that whether there is any similarity between the Sign and the Mark should only be assessed on a side-by-side analysis, with extraneous circumstances only being considered at the next stage when assessing likelihood of confusion.

The Supreme Court noted that in order to assess the degree of similarity between the marks concerned a court must determine the degree of visual, aural (or phonetic) and conceptual similarity between them.  If there is even a faint similarity, the court must undertake a global assessment of whether there is a likelihood of confusion on the part of the relevant public (the average consumer of the goods in question) in the context in which the sign is used.  It went on to hold that:

• The trial judge had taken the correct approach: asking whether there was similarity on a side-by-side comparison (a faint resemblance was found) before going on to make a global assessment of the likelihood of confusion which can take into account realistic and representative viewing angles (looking down on a football boot being worn by someone else) and can adjust its initial assessment as to the degree of similarity. Realistic and representative post-sale circumstances can therefore be taken into account for the purpose of establishing similarity and the extent of it.
• It does not need to be the only viewpoint from which a consumer would ever encounter the Sign to be considered as was contended by Dream Pairs.
• Provided the post-sale circumstances considered were realistic and representative then no absurdity (in terms of dissimilar marks and signs being considered similar) would result.
• Post-sale circumstances can be considered when assessing similarity to establish, but not rule out, similarity.

2. Can post-sale confusion be a standalone basis for infringement?

Dream Pairs also sought to establish that any post-sale confusion should not be actionable unless it involves confusion that affects the essential function of a trade mark as a guarantee of origin at the point of a subsequent sale (the guarantee of origin being the essential function of a trade mark).  The Supreme Court rejected this, as it did their submission that before there is an actionable infringement, the post-sale confusion must result in damage at the point of sale or in a transactional context in the sense of influencing consumers when they make a choice with respect to the goods or services in question.  The Supreme Court found no authority for these positions in case law of the CJEU or in the TMA: 

“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” (paragraph 92).

As such, post-sale confusion can be a standalone basis for trade mark infringement under section 10(2).

3. Was the Court of Appeal was entitled to re-make the decision?

As noted by the Supreme Court, “the law has imposed structured constraints designed to prevent a free for all in a higher court” by the party that is unsuccessful at first instance.  The Court of Appeal found the trial judge’s assessment of very faint similarity between the Sign and one of the Marks in the assessment of footwear from other angles was irrational.  The Supreme Court rejected this and the Court of Appeal’s finding that the trial judge failed to consider the impact of the Sign, particularly in the post-sale context.  The Supreme Court found no basis for saying that the trial judge relied too heavily on a comparison of the graphic Mark and Sign rather than on how they appeared on a boot, or too heavily on a side-by-side comparison of the Mark and the Sign, instead holding:

“It is plain that the judge gave 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”. 

It felt that there were not matters such as irrationality, error of principle or of law which justified the Court of Appeal in substituting its own different view of the answer to the multifactorial question facing the judge from that which he had reached.  As such, the Court of Appeal had not been entitled to substitute its own decision for that of the trial judge.

Conclusion

In light of this judgment, brand owners will need to ensure they consider post-sale circumstances and the wider context in which their marks and other signs will be used when assessing similarity and likelihood of confusion.  This will be relevant not only in an infringement context but also in the context of trade mark applications and oppositions.  Cases may become more fact-specific, making it (even) harder to predict judicial outcomes.  On the other hand, a more contextual assessment of similarity may assist brand owners in demonstrating that a similarity and likelihood of confusion exist.  In addition, the confirmation that post-sale confusion alone can be grounds for trade mark infringement and that there is no need for consumers to have been confused into making a purchase for damage to the origin function of a trade mark to occur will be welcomed by brand owners.

This is an unusual decision in that the Supreme Court disagreed with the submissions on which the appeal was brought but allowed the appeal in any event due to the Court of Appeal overstepping its role on this occasion by evaluating similarity and the likelihood of confusion afresh.  This reminder from the Supreme Court means any would-be appellants should carefully consider the grounds of any appeal they wish to bring and take advice on the likely willingness of the appellate court to reopen different aspects of the judgment.