The Supreme Court allowed the appeal, finding that post-sale confusion can be actionable, even in the absence of confusion at the point of a subsequent sale. However, in this case, the Court of Appeal was not justified in substituting its own assessment of similarity and likelihood of confusion with the decision of the trial judge.

Background

This was an appeal from last year's judgment, in which the Court of Appeal overturned the High Court decision on the basis that the trial judge reached an irrational conclusion and made errors of principle: [2024] EWCA Civ 29. 

Iconix owns the well-known UMBRO sportswear brand. Its registered trade marks include the below "double diamond" mark (UKTM No. 991668, hereafter the "668 Mark"), which has been used for many years in the UK on sportswear (particularly football kit) and on footwear (particularly football boots).

Dream Pairs began using its so-called "DP" sign below in 2018, which appeared on various articles of footwear, including football boots and trainers. These items were sold online, usually with the sign being used in conjunction with the brand name DREAM PAIRS:

The case mainly focused on infringement under s 10(2)(b) of the UK Trade Marks Act. At first instance, Miles J considered that Dream Pairs' sign and 668 Mark were only faintly similar and that there was no likelihood of confusion. The Court of Appeal overturned the decision and conducted a fresh assessment of both similarity and confusion. The Court found there was "a moderately high level of similarity" between the signs in the post-sale context, namely when others saw the sign on the side of a boot on the foot of another person, which would be viewed from above and at an angle. Dream Pairs appealed.

"Realistic and representative" post-sale circumstances can be used in the similarity assessment

The first issue before the Supreme Court was whether extraneous circumstances could be considered when assessing the degree of similarity between the sign and the registered trade mark, such as how the goods are subsequently perceived from the viewpoint of an onlooker in the post-sale environment. Dream Pairs argued that the intrinsic similarity between the signs should be assessed using side-by-side analysis, with extraneous context only considered at the next stage, when the court undertakes a global assessment of the likelihood of confusion to the public. 

Dream Pairs shoe

The Supreme Court rejected this argument: the viewing angle of an onlooker would be considered at one stage or another of the assessment. Even so, the Supreme Court took the opportunity to review some CJEU case law raised by Dream Pairs. These cases established that post-sale circumstances cannot be used to rule out intrinsic similarities between the signs at issue, but critically, however, the CJEU case law did not say that post-sale circumstances cannot be considered to establish similarity between the signs at issue. 

Therefore, the Supreme Court concluded that "realistic and representative post-sale circumstances can be taken into account for the purpose of establishing whether the signs at issue are similar and, if so, the degree of similarity": [59].

Post-sale confusion, absent point of sale confusion, can be a free-standing basis for infringement

Numerous UK authorities have already taken post-sale confusion into account. The concept was defined by Arnold J (as he then was) in Datacard v Eagle Technologies (see IPKat here) as:

…confusion on the part of part of the public as to the trade origin of goods or services in relation to which the impugned sign has been used which only arises after the goods or services have been purchased.

The question was whether this likelihood of confusion can include a risk of confusion arising outside the transactional context and/or by someone other than the potential purchaser. Dream Pairs argued that it would not amount to actionable infringement unless it involved confusion so as to affect or jeopardise the essential function of a trade mark as a guarantee of origin at the point of a subsequent sale or in a subsequent transactional context.

In effect, Dream Pairs was trying to limit the actionable circumstances to those which "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": [69]. The High Court had noted that most of Dream Pairs' sales were through Amazon UK and the webpage had relevant contextual factors (such as references to the Dream Pairs brand) that would dispel confusion at the point of sale.

The Supreme Court reviewed the CJEU case law, which said that it can be relevant to take the post-sale context into account, but had not addressed whether actionable infringement was limited to post-sale confusion at the point of a subsequent sale: [85]. The Supreme Court agreed with Arnold LJ's view:

… it is possible in an appropriate case 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.

The Supreme Court gave several reasons for this view, including the fact that the CJEU judgment in Canon refers to "the public," not "the purchasing public." Furthermore, the non-exhaustive list in s 10(4) includes numerous uses of a trade mark that are remote in time from the point of purchase (or any other transaction), such as use in advertising.

The role of appellate courts

Finally, the Supreme Court considered whether the Court of Appeal was entitled to re-make the decision. The Supreme Court noted that the analysis under s 10(2)(b) is a "classic example" of a multi-factorial assessment: [93]. In such cases, reasonable (and judicially trained) minds can come to different conclusions, so there are constraints on when a higher court may interfere; namely, if there was an irrational conclusion or an error of law or principle. The reasons for placing such constraints have been discussed in several intellectual property cases, such as Fage UK and Lifestyle Equities.

The Supreme Court found that the Court of Appeal's criticisms of the trial judge's analysis were misplaced. Miles J had carefully considered - and rejected - the submissions about the impact of viewing the sign from different angles, which could make the sign on the side of the boot appear elongated. At the same time, the Court of Appeal ignored the fact the sign was also affixed to the top of the boot, etc, where the viewing angle was square-on. The trial judge's assessment of similarity was by no means irrational. 

Nor had the trial judge made an error of principle. Miles J's analysis was not conditioned by side-by-side analysis of the signs: the judgment considered the imperfect recollection of the average consumer when seeing the sign, both at the point of sale and post-sale. The Supreme Court concluded:

With respect, [the Court of Appeal] appear to have fallen into the trap of thinking that the only reasons why the judge could have reached an equally firm view differing from their own was that he must have made the errors of principle of which he was accused by Iconix.

Concluding Thoughts

The Supreme Court decision confirms that post-sale confusion can be actionable even if it does not affect or jeopardise the essential function of a trade mark at the point of subsequent sale. However, as Ilanah Fhima recently pointed out, the Court of Appeal decision (and subsequently, the Supreme Court decision) did not identify what harm has occurred in this context. 

The decision is also a reminder of the role of appellate courts. Firmly disagreeing with the outcome of the trial judge's assessment is not a good enough reason to intervene and conduct a fresh evaluation.

Source: https://ipkitten.blogspot.com/2025/06/post-sale-confusion-alone-can-be-basis.html