Post-sale Confusion

The UK Supreme Court, the U.K. highest court, has confirmed that trademark infringement because of post-sale confusion is a viable cause of action.

The Facts 

Iconix Luxembourg Holdings SARL ("Iconix") owns the well-known sportswear brand UMBRO and is the registered proprietor of the two U. K. trademarks shown below ("the UMBRO Marks"):

The UMBRO Marks have been widely used on football boots in the United Kingdom since 1987. Sales of boots bearing the UMBRO Marks with a value of more than $60 million were made in the UK in each year 2016-2018.

Dream Pairs Europe Inc and Top Glory Trading Group Inc (together "Dream Pairs") sell a variety of footwear in multiple countries under various brands, including one brand called 'Dream Pairs' which has used the mark below ("the DP Mark"):

Since late 2018, Dream Pairs have, via the Amazon UK website and to a lesser extent the eBay UK website, sold a variety of footwear branded with the DP Mark in the United Kingdom.

The Trial   Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc. [2023] EWHC 706 (Ch) 

Iconix sued Dream Pairs for infringement of the UMBRO Marks. The action went to trial and was dismissed. The Judge said there was "at most a very low degree of similarity" between the UMBRO Marks and the DP Mark, and no likelihood of confusion between the two in the mind of the average consumer. 

Iconix also alleged post-sale confusion. Post-sale confusion is confusion of the public concerning the trade origin of goods or services in relation to which the impugned sign has been used but which arises after the goods or services have been purchased.

Iconix claimed that consumers who saw people wearing Dream Pairs shoes would confuse them with Umbro shoes. Iconix argued that the court should consider how the shoes with the DP Mark would look to other consumers in realistically likely situations. Iconix relied on an image where a boot was muddy and argued this approach was permissible because football boots might be seen on the pitch or the changing rooms covered in mud. 

The Trial Judge acknowledged the force of the argument in principle. However, Iconix had to show it was the use of the UMBRO Marks (rather than the shape of the boot or anything else) which led to confusion. The Trial Judge did not consider that a significant proportion of the public (having the characteristics of the average consumer) would see the DP Mark, even when muddy, as more than very faintly similar to the UMBRO Marks or would confuse the DP Mark with the UMBRO Marks. Carrying out a global assessment resulted in the same conclusion for post-sale as for pre-sale confusion.

The Court of Appeal   Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc. [2024] EWCA Civ 29

Iconix appealed to the UK Court of Appeal who allowed the appeal. They said that: 

(i) The Judge's conclusion that there was a very low degree of similarity between the respective marks was irrational when one considered the DP Mark affixed to footwear from any angle other than square-on;

(ii) The judge erred in principle by being unduly swayed by a side-by-side comparison of the respective marks, particularly looking at their graphic images rather than when affixed to footwear, to assess post-sale confusion.

(iii) The judge erred in principle by failing to appreciate that, in the post-sale context, the average consumer would see the DP Mark from an angle, and in particular from above, rather than sideways-on, as when viewed at the point of sale.

The Court of Appeal assessed similarity and confusion for itself. They concluded that there was “a moderately high level of similarity” between the respective marks in the post-sale context, particularly when the DP Mark was viewed on a football boot by a viewer standing nearby and looking down at it. It also concluded that there was a likelihood of confusion by a significant proportion of consumers.

UK Supreme Court   Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc [2025] UKSC 25 

Dream Pairs appealed to the UK Supreme Court. Dream Pairs raised two grounds of appeal. First, when assessing whether the respective marks were similar extraneous circumstances, such as how the goods are subsequently perceived, should not be considered (the Similarity Issue). Second, that the essential purposes of trademark protection require the likelihood of confusion by the public be assessed at the point of a sale or in a subsequent transactional context (the Confusion issue). 

On the Similarity Issue the Court strongly disagreed and said that realistic and representative post-sale circumstances can be considered to establish whether the signs are similar and, if so, the degree of similarity.

On the Confusion Issue the Court agreed with the Court of Appeal that it is possible in an appropriate case for use of a sign to give rise to a likelihood of confusion because of post-sale confusion even if there is no likelihood of confusion at the point of sale

Notwithstanding Iconix’s success of on these issues the appeal was allowed because the Court of Appeal’s approach was not justified on the facts of the case.

The Court said it was an obvious, and inevitable conclusion, that reasonable minds, and in particular reasonable judicially trained minds, each faithfully applying the relevant law and principles, will come to different conclusions about the answer to multifactorial questions such as trademark infringement. While the decision of an appellate court trumps the court below, the law imposes 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.

The reasons for this include:

(i) The trial is not a dress rehearsal. It is the first and last night of the show.

(ii) Duplication of the trial judge's role on appeal is a disproportionate use of the limited resources of an appellate court.

(iii) In making decisions the trial judge considers the whole of the sea of evidence presented, but an appellate court will only be island hopping.

Comment

There does not seem to be a reported Canadian decision specifically dealing with post-sale confusion. However there does not appear to be anything in the current language of “confusion” or “infringement” in the Canadian Trademarks Act to prevent the adoption of this approach. 

There is a Canadian standard of appellate review which accomplishes a similar result but is but it less colourful.

If you have questions, please contact me at mckeown@gsnh.com 

John McKeown

Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1700 

Toronto, Ontario MSG 1V2

Direct Line: (416) 597-3371

Fax: (416) 597-3370

This article is of general nature and is not intended to provide specific legal advice as individual situations will differ. Specialist advice should be sought about your specific circumstances. 

A version of this article originally appeared in the Law360 Canada published by LexisNexis Canada Inc.