The UK Supreme Court has delivered a landmark ruling in Dream Pairs Europe Inc and another v Iconix Luxembourg Holdings SARL, providing much-needed clarity on the role of post-sale confusion in trademark infringement. The decision, [2025] UKSC 25, emphasizes that post-sale confusion alone can establish infringement when it causes damage to the origin function of a trademark.
Key Takeaways
Post-Sale Confusion Alone Can Establish Infringement
- The Supreme Court affirmed that confusion about the origin of goods by the average consumer is sufficient for infringement under section 10(2)(b) of the Trade Marks Act 1994 (TMA). No further damage is required.
Supreme Court Rejects Post-Sale Limitation
- The court rejected arguments imposing a "Post-Sale Limitation," which would have restricted post-sale confusion to point-of-sale or transactional contexts.
Global Assessment of Likelihood of Confusion Validated
- The Supreme Court upheld the validity of the global assessment, where similarity and confusion are evaluated together, even when similarity is not apparent in a side-by-side comparison.
Realistic Post-Sale Circumstances Must Be Considered
- The court stressed that post-sale confusion must be assessed based on realistic and representative circumstances, aligning with principles from the European Court of Justice (ECJ).
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Background
The case involved Iconix Luxembourg Holdings SARL, a luxury fashion brand, and Dream Pairs Europe Inc, which sells similar-looking products. The conflict centered on whether post-sale confusion alone could constitute actionable infringement.
First Instance Decision
High Court Ruling: Justice Miles dismissed Iconix’s claim in 2022, finding that the Dream Pairs’ mark lacked intrinsic similarity to Iconix’s and caused no confusion at the point of sale or in post-sale contexts.
Key Reasoning: Miles emphasized careful consideration of how the Dream Pairs’ mark would be perceived in various viewing angles and contexts. He concluded there was no irrationality or error of principle in his decision.
Court of Appeal Decision
Appeal Ruling: The Court of Appeal reversed Miles’ decision in 2024, finding that Iconix’s mark caused confusion due to how Dream Pairs’ products were viewed in post-sale contexts.
Reasoning: The court highlighted the importance of post-sale perception and ruled that post-sale confusion could occur even without confusion at the point of sale.
Appeal to the Supreme Court
Dream Pairs’ Arguments: The appellants argued that post-sale confusion should not suffice for infringement unless it affected the trademark’s essential function as a guarantee of origin. They also challenged the validity of the global assessment.
Supreme Court Ruling: The Supreme Court dismissed Dream Pairs’ arguments, supported by no ECJ authorities. It upheld the propositions that trade marks can cause infringement through post-sale confusion and that realistic post-sale contexts must be considered in trademark assessments.
Decision
Similarity Aspect
The Supreme Court affirmed that intrinsic similarity is not a precondition for the global assessment. Post-sale similarity, even if not apparent in a side-by-side comparison, can still lead to actionable confusion. The court referenced Equivalenza (CJEU 2017), emphasizing that the overall impression of signs must be considered.
Confusion Aspect
The Supreme Court rejected Dream Pairs’ Post-Sale Limitation argument. It held that post-sale confusion can influence consumers in non-transactional contexts, such as on the street or social media. This aligns with section 10(4) TMA, which outlines the broader scope of trademark use.
Rejection of Appeal
The Supreme Court allowed Dream Pairs’ appeal, noting that Miles’ decision was not irrational or erroneous. It emphasized the intentional constraints on appellate interference with first-instance decisions.
Comment
This judgment is a milestone for post-sale confusion doctrine, which has been controversial in recent years. The ruling reaffirms that trade marks protect brands beyond the initial sale and that the global assessment remains valid.
For fashion brands like Iconix, this decision is particularly significant, as it validates the importance of post-sale protection against copycats. However, it applies to all brand owners, reinforcing the ongoing relevance of trademarks in preventing lookalike products.
It also serves as a cautionary tale for parties considering appeals. The Supreme Court’s disapproval of appellate interference suggests that lower courts’ findings may be less susceptible to challenge in the future.
Conclusion
The Dream Pairs ruling clarifies that post-sale confusion alone can establish trademark infringement, provided it causes confusion among consumers and damages the essence of the trademark as a guarantee of origin. This decision is a victory for brand owners and a reminder of the evolving nature of trademark protection in the digital age.