- Bookmark
- Share
- CaseIQ
Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc & Anor
Factual and Procedural Background
The Plaintiff owns the well-known sportswear brand “UMBRO” and holds two United Kingdom trade-mark registrations (the “UMBRO Trade Marks”) that have appeared on football boots since 1987. The Defendant markets footwear worldwide and, from late 2018, sold boots in the United Kingdom through online platforms using a stylised geometric logo (the “DP Sign”).
On 19 July 2021 the Plaintiff issued proceedings for infringement under sections 10(2)(b) and 10(3) of the Trade Marks Act 1994. At first instance Judge [Last Name] dismissed the claim, finding only a “very low degree of similarity” between the signs and no likelihood of confusion: [2023] EWHC 706; [2023] RPC 15.
The Court of Appeal (Judge [Last Name], Judge [Last Name] and Judge [Last Name] LJJ) reversed that decision: [2024] EWCA Civ 29; [2024] RPC 10, holding that the trial judge’s analysis was irrational and that infringement under section 10(2)(b) was established.
The Defendant obtained permission to appeal to the Supreme Court. The present judgment (Lord Briggs and Lord Stephens, with Lord Hodge, Lord Hamblen and Lady Rose agreeing) addresses (1) two questions of trade-mark law raised by the Defendant and (2) whether the Court of Appeal was entitled to substitute its own multi-factorial assessment for that of the trial judge.
Legal Issues Presented
- Similarity Issue – Whether, at the stage of assessing similarity between a registered mark and an allegedly infringing sign, the court may take into account realistic post-sale viewing circumstances (e.g. how the logo appears when the boot is worn) rather than confining itself to an intrinsic, side-by-side comparison.
- Confusion Issue – Whether post-sale confusion can constitute a self-standing basis for infringement under section 10(2)(b), even if there is no likelihood of confusion at the point of sale or in an immediate transactional context.
- Appellate Intervention Issue – Whether the Court of Appeal was justified in replacing the trial judge’s evaluative findings on similarity and likelihood of confusion.
Arguments of the Parties
Defendant's Arguments
- Similarity must be assessed solely on the intrinsic features of the graphics; post-sale angles are “extraneous circumstances” and should not be considered until the confusion stage.
- Post-sale confusion is only actionable if it jeopardises the essential origin-function of a mark at the point of a subsequent sale or other transactional decision.
- The Court of Appeal exceeded its appellate role by re-making the multi-factorial assessment absent any irrationality or legal error by the trial judge.
Plaintiff's Arguments
- Post-sale perception is a realistic and representative circumstance that can legitimately inform both similarity and confusion analyses.
- Section 10(4) lists acts (e.g. advertising, affixing, exporting) remote from point-of-sale, demonstrating that infringement is not confined to transactional moments.
- The trial judge’s focus on square-on, side-by-side comparison ignored how consumers actually encounter the sign, rendering the conclusion unsustainable.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| L’Oréal SA v Bellure NV (C-487/07) | Multiple functions of a trade mark (origin, quality, communication, advertising). | Reaffirmed broad scope of protection granted to registered marks. |
| SkyKick UK Ltd v Sky Ltd [2024] UKSC 36 | Essential “badge of origin” function; UK’s obligation to TRIPS. | Cited as contemporary Supreme Court authority on trade-mark purpose. |
| Bentley Motors Ltd v Bentley 1962 Ltd [2020] EWCA Civ 1726 | Infringement where mark and sign are identical for identical goods (s.10(1)). | Explained why s.10(1) was not invoked in the present dispute. |
| Sabel BV v Puma AG (C-251/95) | Global appreciation of similarity based on overall impression. | Formed core test for similarity and confusion analysis. |
| Ferrero SpA v OHIM (C-552/09 P) | Even faint similarity necessitates global confusion assessment. | Used to reject a rigid threshold barring consideration of weak similarities. |
| EUIPO v Equivalenza (C-328/18 P) | Marketing circumstances cannot negate intrinsic similarity at similarity stage. | Distinguished: cannot negate similarity, but may establish similarity. |
| JW Spear & Sons Ltd v Zynga Inc [2015] EWCA Civ 290 | Carrying similarity findings into likelihood-of-confusion assessment. | Guided how degree of similarity feeds the global test. |
| London Taxi Corporation Ltd v Frazer-Nash Research Ltd [2017] EWCA Civ 1729 | Definition and characteristics of the average consumer. | Adopted when identifying the relevant public for footwear. |
| Intel Corp Inc v CPM UK Ltd (C-252/07) | Average consumer may represent a spectrum of attributes. | Supported reasoning about “significant proportion” standard. |
| Match Group LLC v Muzmatch Ltd [2023] EWCA Civ 454 | Consolidated principles for likelihood of confusion. | Provided authoritative checklist applied by the Court. |
| Lidl GB Ltd v Tesco Stores Ltd [2024] EWCA Civ 262 | Five key points about the average consumer. | Cited in defining consumer attention and perception. |
| Koninklijke Philips NV v Remington (C-299/99) | Relevant public equals average consumer of the goods. | Applied to delimit the “UK adult population”. |
| Lloyd Schuhfabrik Meyer GmbH v Klijsen Handel BV (C-342/97) | Variable attention levels by product category. | Supported high attention for expensive goods; moderate for boots. |
| Canon KK v Metro-Goldwyn Mayer Inc (C-39/97) | Definition of likelihood of confusion. | Quoted to emphasise risk of consumers believing goods share origin. |
| Specsavers Intl Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24 | Sign not to be considered stripped of its context. | Underpinned discussion of post-sale vantage points. |
| O2 Holdings Ltd v Hutchison 3G UK Ltd (C-533/06) | Assessment limited to circumstances characterising the impugned use. | Confined analysis to actual Amazon/eBay usage. |
| Intel Corp v CPM (already above) | ||
| Audi AG v GQ (C-334/22) | Marketing conditions considered at confusion (not similarity) stage. | Distinguished but not applied to bar post-sale similarity analysis. |
| Arsenal FC plc v Reed (C-206/01) | Post-sale confusion may jeopardise origin function. | Relied on to confirm legal relevance of post-sale confusion. |
| Anheuser-Busch Inc v Budějovický Budvar (C-245/02) | Consumers encountering goods after sale must be considered. | Undermined Defendant’s attempt to restrict actionable confusion. |
| Ruiz-Picasso v OHIM (T-185/02; C-361/04 P) | Level of consumer attention; post-sale assessment still relevant. | Cited to reject argument that only transactional confusion matters. |
| Datacard Corp v Eagle Technologies Ltd [2011] EWHC 244 | Definition of post-sale confusion. | Provided starting point for discussion of post-sale scenarios. |
| Thomas Pink Ltd v Victoria’s Secret UK Ltd [2014] EWHC 2631 | Use of post-sale confusion in infringement analysis. | One of several domestic authorities validating post-sale focus. |
| Montres Breguet SA v Samsung Electronics Co Ltd [2023] EWCA Civ 1478 | Rationale for considering post-sale confusion. | Quoted for the historic significance of “badges of origin” after sale. |
| Fage UK Ltd v Chobani UK Ltd [2014] EWCA Civ 5 | Appellate caution toward trial findings. | Formed part of Supreme Court’s discussion on appellate restraint. |
| Lifestyle Equities CV v Amazon UK Services Ltd [2024] UKSC 8 | Standard for overturning evaluative decisions (“identifiable flaw”). | Applied to test whether Court of Appeal was entitled to interfere. |
| In re Sprintroom Ltd [2019] 2 BCLC 617 | Guidance on appellate review of multi-factorial assessments. | Reiterated in analysing Court of Appeal’s approach. |
Court's Reasoning and Analysis
1. Similarity Issue. The Court held that realistic and representative post-sale circumstances may be considered when establishing similarity. Equivalenza prohibits using marketing context to negate intrinsic similarity, but does not bar using context to confirm similarity. Restricting analysis to square-on graphics could defeat the requirement (from Sabel and Ferrero) to undertake a global appraisal once even faint similarity is shown. The Court added that evaluating similarity from plausible angles does not yield inconsistent or “absurd” outcomes because the same viewpoints are applied consistently across cases.
2. Confusion Issue. The Court rejected the Defendant’s contention that only confusion affecting future transactions is actionable. Authorities such as Arsenal v Reed, Anheuser-Busch and Ruiz-Picasso recognise that a trade-mark’s origin function endures after sale, so confusion perceived by third-party observers can infringe. Section 10(4) expressly lists acts (e.g. advertising) remote from point-of-sale, illustrating that infringement is not confined to purchasing moments. No statutory or treaty language limits actionable confusion to transactional contexts.
3. Appellate Intervention. Applying Fage, Lifestyle Equities and Sprintroom, the Supreme Court emphasised that similarity and confusion are classic multi-factorial evaluations. An appellate court may only intervene for an identifiable error of principle, logic gap, or irrationality. The trial judge had: (a) reviewed graphic and in-use images; (b) considered multiple viewing angles; and (c) performed separate point-of-sale and post-sale analyses. His finding of “very faint” similarity and no likelihood of confusion was not irrational. The Court of Appeal therefore lacked justification to substitute its own view.
Holding and Implications
APPEAL ALLOWED. The Supreme Court restored the trial judge’s dismissal of the infringement claim. The Court of Appeal’s decision is set aside.
Implications: The judgment affirms two doctrinal points: (1) realistic post-sale perceptions may inform similarity assessments, and (2) post-sale confusion can constitute infringement independent of point-of-sale confusion. Nonetheless, the Court underscores strict limits on appellate re-evaluation of first-instance findings in trade-mark disputes, reinforcing deference to trial judges in multi-factorial assessments. No new precedent is created, but existing principles are clarified and appellate boundaries are emphasised.
Alert