Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc [2025] UKSC 25 (24 June 2025)

A trade mark dispute concerning football boot logos. Iconix, owner of the UMBRO trade marks, sued Dream Pairs for infringement under section 10(2)(b) of the Trade Marks Act 1994. The Supreme Court considered whether post-sale confusion could constitute infringement and the proper approach to assessing similarity between marks. The appeal was allowed, restoring the trial judge's finding of no infringement.

Facts

Iconix Luxembourg Holdings SARL owned the well-known UMBRO sportswear trade marks, which had been widely used on football boots in the United Kingdom since 1987. Dream Pairs Europe Inc and Top Glory Trading Group Inc sold footwear under the ‘Dream Pairs’ brand using a DP Sign logo. From late 2018, Dream Pairs sold footwear bearing the DP Sign in the UK via Amazon UK and eBay UK websites.

Iconix brought proceedings against Dream Pairs for trade mark infringement under section 10(2)(b) of the Trade Marks Act 1994, claiming the DP Sign was similar to the UMBRO Trade Marks and its use was likely to cause confusion on the part of the public.

Issues

The appeal raised two main issues of trade mark law:

The Similarity Issue

Whether at the stage of assessing similarity between marks, extraneous circumstances such as how goods are perceived in the post-sale environment can be taken into account to establish similarity.

The Confusion Issue

Whether post-sale confusion can constitute actionable infringement under section 10(2)(b) even if there is no likelihood of confusion at the point of sale, or whether actionable infringement is limited to confusion affecting the essential function of a trade mark at the point of a subsequent sale or transactional context.

A further issue arose as to whether the Court of Appeal was entitled to substitute its own decision for that of the trial judge.

Judgment

The Similarity Issue

The Supreme Court held that realistic and representative post-sale circumstances can be taken into account for the purpose of establishing whether signs are similar. The Court rejected Dream Pairs’ submission that only intrinsic features could be considered at the similarity stage, holding that the CJEU decision in Equivalenza prohibited using post-sale circumstances to rule out similarities, but not to establish them.

The Confusion Issue

The Court rejected Dream Pairs’ argument that only post-sale confusion affecting the essential function of a trade mark at the point of a subsequent sale or transactional context can amount to actionable infringement. Arnold LJ’s statement that it is possible for use of a sign to 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 was endorsed.

The Appeal

Despite rejecting Dream Pairs’ main points of law, the Supreme Court allowed the appeal. The Court held that the Court of Appeal erred in finding that the trial judge’s conclusion was irrational or that he had made errors of principle. The trial judge had carefully considered similarity from various angles and in the post-sale context. The Court of Appeal’s contrary view did not justify substituting its own assessment for a proper multi-factorial decision by the trial judge.

Implications

This decision clarifies two important principles in trade mark law:

First, when assessing similarity between marks, courts may consider how signs are realistically and representatively perceived in post-sale environments, not merely their intrinsic features on a side-by-side comparison.

Second, post-sale confusion can constitute actionable infringement independently, without requiring that such confusion affects consumers at the point of a subsequent purchase or transactional decision. A trade mark continues to identify origin even after sale.

The case also reinforces the constraints on appellate courts when reviewing multi-factorial assessments by trial judges, emphasising that such decisions should only be overturned where there is an identifiable flaw undermining the cogency of the conclusion, not merely because the appellate court would have reached a different view.

Verdict: Appeal allowed. The Court of Appeal's decision was set aside and the trial judge's dismissal of Iconix's trade mark infringement claim was restored.

Source: Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc [2025] UKSC 25 (24 June 2025)