Iconic v Dream Pairs: A New Era for UK Trademark Enforcement?
The UK Supreme Court has confirmed that post-sale confusion can be relevant and sufficient to establish trademark infringement in the UK, even if there is no confusion at the point of sale.
Background
The case between Iconic, owner of the well-known Umbro "double diamond" trademark, and Dream Pairs, a footwear company, has become a significant moment in UK intellectual property law. The dispute revolved around whether Dream Pairs' use of a similar diamond-shaped logo on its football boots infringed Umbro's registered trademarks, specifically under the concept of post-sale confusion.
While Dream Pairs did not copy Umbro's mark identically, their logo bore enough of a resemblance that Iconix argued it could confuse consumers after purchase, particularly on the football field, where the logo might be seen by spectators or teammates from a distance.
This raised the pivotal legal question: can post-sale confusion (where the initial purchaser knows the brand they are buying, but others later mistake the item for a different brand) constitute trademark infringement under UK law?
In 2022, the High Court ruled in favour of Dream Pairs, finding no actionable confusion at the point of sale or afterwards. However, in 2023, the Court of Appeal reversed the High Court decision, finding that post-sale confusion could support infringement, and that Dream Pairs' logo was too similar to Umbro's logo.
What Is Post-Sale Confusion?
Post-sale confusion occurs when someone other than the purchaser mistakes a product for being from a different brand after the sale has taken place. This is particularly relevant in sectors like fashion, sports, or luxury goods, where brand preception, image, and reputation are critical.
The concept has long been recognised in jurisdictions like the United States, but until now, UK courts had not definitively addressed whether post-sale confusion alone could amount to trademark infringement.
The Supreme Court's Decision
In its decision, the Supreme Court did two important things:
- Ruled in favour of Dream Pairs, reinstating the High Court's original finding of no likelihood of confusion.
- Confirmed that post-sale confusion can be relevant and sufficient to establish trademark infringement in the UK, even if there is no confusion at the point of sale.
This is a significant development in UK trademark law.
Why Dream Pairs Still Won
While the Supreme Court acknowledged that post-sale confusion can be a valid legal principle, it emphasised that it must be based on realistic and typical circumstances, not hypothetical ones. In this case, it found:
- The Dream Pairs logo was not sufficiently similar to Umbro's in the context of post-sale observation.
- Consumers viewing the boots during ply or from a distance were unlikely to be confused.
- There was no substantial evidence of actual post-sale confusion in the marketplace.
Tidman Comment
The Supreme Court clarified that trademark infringement does not require confusion at the point of purchase and that post-sale confusion is now part of UK law. This expands the scope of trademark protection in the UK and aligns it more closely with other jurisdictions.
Rights holders must present credible evidence that confusion, especially in post-sale scenarios, is likely or occurring in practice. Mere speculation is not enough.Courts will assess post-sale confusion in the typical environment where the product is used or observed, not in artificial or overly broad scenarios.
This case also highlights that even subtle design similarities can carry legal risk, especially in brand-sensitive industries like apparel, sportswear, and luxury goods.
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