UK Supreme Court confirms post sale confusion can constitute registered trade mark infringement

On 24 June 2025, the UK Supreme Court handed down its landmark judgment in Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and another [2025] UKSC 25.

It confirmed what all brand owners wanted to hear: a likelihood of confusion as to the trade origin of goods or services, which only arises after the goods or services have been purchased, can still give rise to UK registered trade mark infringement.

In this article, Carl Steele considers the facts of the case, the key legal points and what this all means in practice.

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Carl Steele | Connect on LinkedIn | csteele@hlk-ip.com

Iconix is the registered proprietor of UK registered trade marks for the following marks, registered for footwear (“the UMBRO Trade Marks”):

Dream Pairs sells footwear bearing with the following sign (“the DP Sign”):

Iconix claimed infringement of the UMBRO Trade Marks by use of the DP Sign on footwear, pursuant to section 10(2) of the Trade Marks Act 1994 (“the Act”).

Section 10(2)(b) states that: “A person infringes a registered trade mark if he uses in the course of trade a sign where because … (b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.”

Iconix claimed that the DP Sign was similar to the UMBRO Trade Marks and its use on footwear, especially football boots, was likely to cause confusion on the part of the public.

The High Court dismissed Iconix’s claim. It found that there was “a very low degree of similarity” between the UMBRO Trade Marks and the DP Sign and no likelihood of confusion.

The Court of Appeal allowed Iconix’s appeal. The Court of Appeal held that the judge’s conclusion that there was a very low degree of similarity was irrational when the DP Sign was considered viewed from any angle other than square-on. The Court of Appeal held that there was “a moderately high level of similarity” between the UMBRO Trade Marks and the DP Sign in the post-sale context, particularly when the DP Sign was viewed on a football boot by a viewer standing nearby and looking down at it. It also concluded that there was a likelihood of confusion on the part of a significant proportion of consumers.

Dream Pairs appealed to the Supreme Court.

The Supreme Court unanimously allowed the appeal and reinstated the first instance judge’s decision.

First, that “realistic and representative” post-sale circumstances can be considered for the purpose of establishing whether marks and signs are ‘similar’ and the degree of similarity between them. However, marketing conditions counteracting any such similarity should be considered in the global assessment of the likelihood of confusion.

Second, it is possible for use of a sign to give rise to a likelihood of confusion (and result in a finding of registered trade mark infringement) because of post-sale confusion – even if there is no likelihood of confusion at the point of sale or supply of the infringer’s goods or services. The Supreme Court highlighted the example of a trade mark placed upon the cork in a bottle of wine. The fact that such a mark is not relied upon, or is invisible, at the point of sale of the bottle of wine does not mean that it does not function as a trade mark, operating as a badge of origin, and hence quality, after the goods have been sold. It does so not to the purchaser of the goods, who is likely to be aware of their origin, but to third parties who encounter the goods after sale: “It is a very old human trait to wish to acquire a product that one has seen worn [or consumed] by a friend or acquaintance or in their home. Furthermore, the goods may be consumed or used by persons other than those who purchased them.”

Third, it is not necessary for post-sale confusion to jeopardise the function of a UK registered trade mark as a guarantee of origin in a subsequent sale or transactional context before it can amount to an actionable infringement. All that matters is that average consumers are likely to be confused about the trade origin of the goods or services in issue. It matters not whether they go on to buy the infringers goods or services.

Fourth, the Court of Appeal should not interfere with a trial judge’s decision on the merits of a claim for registered trade mark infringement pursuant to section 10(2) of the Act, unless their decision was irrational, or there had been an error of principle or of law. Unless such a scenario applies, the Court of Appeal should uphold first instance judge’s decision, even if it would have reached a different view had it been carrying out the multi-factorial assessment.

It is very good news for brand owners. They can enforce their registered trade marks when confusion as to the trade origin of goods or services might arise after the sale or supply of goods or services has been made – even if the trade mark owner does not suffer lost sales or supplies of its own goods or services.

However, clearing proposed new brands for use and registration will arguably now become harder, as it will be necessary to consider realistic and representative post-sale circumstances as to how the new brand might be used and seen, and then to compare that with how pre-existing brands might appear. We suspect that because of the Supreme Court’s decision more oppositions will be filed against trade mark applications with the opponent asserting that, because of a particular viewpoint from which a sign might be encountered post sale (e.g. when viewed at an angle, or from a distance or in some other post sale context), the sign and mark are similar.

Finally, if you lose a ‘likelihood of confusion’ infringement case before the first instance court, but the judge applied the correct legal tests, then a successful appeal to the Court of Appeal is now very unlikely. As the Supreme Court reminded us: “The [first instance] trial is not a dress rehearsal. It is the first and last night of the show.”

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This is for general information only and does not constitute legal advice. Should you require advice on this or any other topic then please contact hlk@hlk-ip.com or your usual HLK advisor.