Supreme Court’s ruling on post-sale confusion in the Umbro trade mark case: Iconix v Dream Pairs
In a recent decision, the Supreme Court handed down judgment allowing an appeal by Dream Pairs Europe Inc and Top Glory Trading Group Inc (together referred to as “Dream Pairs”) against a Court of Appeal finding concerning football boot logos.
The Court of Appeal held that Dream Pairs had infringed UK registrations owned by Iconix Luxembourg Holdings SARL (“Iconix”) for the diamond-shaped Umbro logo because they had used a diamond-shaped “DP” logo which was confusingly similar.
Background
Iconix Luxembourg Holdings SARL (“Iconix”) owns the following UK trade mark registrations in respect of the well-known sportswear brand “Umbro” (the “Umbro Trade Marks”), which have been used as logos on football boots in the UK since 1987:
Since 2018, Dream Pairs have marketed and sold online in the UK (almost exclusively through Amazon) footwear bearing the following sign (the “DP Sign”):
An example of a product sold by Dream Pairs (extracted from pages from Amazon UK’s website) is shown below:
The High Court decision
The High Court dismissed Iconix’s claim because the judge found that there was “at most a very low degree of similarity” between the Umbro Trade Marks and the DP Sign, and no likelihood of confusion. Iconix appealed to the Court of Appeal, which allowed the appeal.
The Court of Appeal decision
The Court of Appeal took the view that the High Court’s conclusion that there was a very low degree of similarity between the Umbro Trade Marks and the DP Sign was irrational. The Court of Appeal concluded 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 being worn at a game, 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 decision
The Supreme Court rejected Dream Pairs' arguments that realistic and representative post-sale circumstances could not be taken into account in order to establish whether the DP Sign and Umbro Trade Marks were similar, and that only post-sale confusion which affected or jeopardised the function of a trade mark as a guarantee of origin in a subsequent sale or in a subsequent transactional context could amount to an actionable infringement.
However, the Supreme Court allowed the appeal on the ground that it agreed with Dream Pairs that the High Court’s decision did not contain sufficient errors in law or principle, or conclusions that were sufficiently irrational, so as to allow the Court of Appeal to make the similarity and confusion appraisal afresh and replace the High Court’s multi-factorial assessment and conclusion.
Although the decision of an appellate court trumps that of the court below, the law has imposed structured constraints designed to prevent a free for all in a higher court whenever a party (with the necessary resources) wishes to challenge the first instance decision of the trial judge. In Fage UK Ltd v Chobani UK Ltd [2014] EWCA Civ 5; [2014] FSR 29, the reasons for such constraints were set out as follows:
- The trial is not a dress rehearsal. It is the first and last night of the show.
- Duplication of the trial judge's role on appeal is a disproportionate use of the limited resources of an appellate court.
- In making his decisions the trial judge will have regard to the whole of the sea of evidence presented to him, whereas an appellate court will only be island hopping.
In the view of the Supreme Court, the High Court judge had dealt carefully with, and rejected, Dream Pairs’ submissions about viewing the DP sign from different angles. In addition, the Court of Appeal's assessment had ignored the fact that the DP sign appeared affixed not only to the side but also to the top of the boot, on the tongue or similar surface. The High Court’s assessment had not been irrational and had not involved an error of principle. The Court of Appeal’s criticism of the High Court judge was misplaced: it was plain that he had given careful consideration to the post-sale context - and to the effect of viewing the DP Sign from different angles - but did not regard those considerations as detracting from his conclusion about faint similarity or unlikelihood of confusion. For those reasons, although the Supreme Court rejected the main points of law raised by Dream Pairs, it allowed Dream Pairs’ appeal in full on the basis that the Court of Appeal had erred in substituting their own different views for that of the High Court judge.
Comment
Brand owners, especially those in industries like fashion where the brand can be viewed in various realistic contexts and where a significant portion of the brand's value lies in the perceptions of non-purchasers, will find reassurance in the findings that suggest potentially infringing signs may exhibit greater similarity in practical use than they do on paper and that this similarity can continue to threaten the function of a brand owner's trademark, even in the absence of subsequent sales of the infringing product. On the other hand, new market entrants must ensure that their clearance analysis is broad and context-sensitive in order to identify potentially relevant risks.
For litigants, the Supreme Court's strong guidance regarding the boundaries of appellate intervention will prompt further consideration when evaluating the possible outcomes and options for appealing a first instance ruling.
It will be intriguing to observe how the Court of Appeal addresses this critique in upcoming cases, particularly since it may not be straightforward to ascertain whether a differing opinion arises from a mistake in fact or law, or if the appellate court merely holds a different perspective on the merits.
Case ref: Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and another [2025] UKSC 25 (24 June 2025).
