Iconix v Dream Pairs: UK Supreme Court confirms the relevance of post-sale confusion when assessing infringement

Introduction

In a claim for trade mark infringement, whether or not there is a likelihood of consumer confusion between one trader’s products and those of another is an essential part of the analysis. But must this confusion always be at the point of sale, such as in a retail outlet or on an online store? What about confusion that takes place later, when the products are in actual use? In the case of logos on trainers, does it matter that they look more similar when viewed on the side of shoes on the football pitch than when viewed side by side in the store?

This question was addressed by the UK Supreme Court (UKSC) in Iconix Luxembourg Holdings SARL (Respondent) v Dream Pairs Europe Inc and another (Appellants). On 24 June 2025, the UKSC confirmed that post-sale confusion is relevant when assessing infringement. However, in the context of this case specifically, it also said that the Court of Appeal was not justified in overturning the High Court’s first instance decision that there had been no infringement due to the low level of similarity between the trade marks at issue.

 

The parties and the dispute

Iconix Luxembourg Holdings SARL (Iconix) is the owner of the Umbro brand, which is well-known in the UK. Umbro branded products attracted GBP60 million in UK sales in each of 2016 to 2018. From 1984 to 2012, England’s national football team wore Umbro branded kits. In 2005, Umbro became a founding partner of the new Wembley Stadium. Umbro has collaborated with other popular fashion brands, including Supreme and Off-White.

Dream Pairs Europe Inc (Dream Pairs) is the owner of the Dream Pairs footwear brand, founded in the USA. In 2022, 6.5 million pairs of Dream Pairs shoes were sold in the US via online and high street stores. It operates in the UK through sales on Amazon’s UK website. Between December 2018 and December 2022, the brand’s UK sales were approximately 11,500, encompassing adult football boots, children’s football boots and children’s trainers and hiking sandals.

The dispute concerns the logos of the two brands which appear on their respective footwear products:

• Umbro's “double diamond” device mark, as represented in UK registered trade mark no. 991668 (as a series of two, registered with effect from 5 May 1972, covering “articles of clothing for use in sports, athletics and gymnastics” in Class 25), and no. 903266459 (registered with effect from 10 July 2003, covering, inter alia, "articles of clothing, footwear and headgear" in Class 25) (together, the “Umbro Marks”);

• Dream Pair's logo, a stylised diamond-shaped device consisting of an outer letter 'D' and an inner letter 'P' (the “DP Logo”). Dream Pairs' UK application to register the DP Logo as a trade mark is pending as of the time of writing, however it has already registered a composite mark consisting of the DP Logo and the text “Dream Pairs”.

Source: UK IPO

In the dispute, Iconix alleged that Dream Pairs' use of the DP Logo constituted infringement of the Umbro Marks.

 

The previous court decisions

In a 28 March 2023 decision¹, Iconix’s claim was dismissed by the High Court (HC). The HC acknowledged that the Umbro logo is famous in the UK in relation to sportswear, particularly football kit and boots, and has a high level of distinctiveness. It also acknowledged that the products at issue in the dispute (namely, footwear) were identical. However, the HC found only a ‘very faint’ degree of similarity between the marks, and found that the ‘P’ element in the DP Logo was its dominant and distinctive element. It dismissed Iconix’s evidence that consumers had been confused between the products of Iconix and Dream Pairs, holding that the average consumer would display an approximately moderate degree of attention both at the time of purchase and afterwards.

As to whether Dream Pairs had taken unfair advantage of the Umbro Marks, the HC found that it had not; it held that the use of the DP Logo would not give rise to a link with the Umbro brand, nor was there evidence to show that consumers would believe that Dream Pairs’ products would have the same characteristics as those of Umbro.

Iconix appealed to the Court of Appeal (CA) which, in a 26 January 2024 decision², allowed the appeal. The HC’s finding that there was only a ‘very faint’ level of similarity between the marks was, the CA said, rationally insupportable and went on to find that the HC had made an incorrect assessment of the likelihood of post-sale confusion. The CA held that the ‘P’ element in the DP Logo could not be the dominant and distinctive element, as the DP logo is not a composite sign made up of distinct elements, and rather must be assessed as a whole. The HC had failed to properly consider consumers who encountered the DP Logo for the first time in the post-sale context, who would frequently see the DP logo at an angle, such as affixed to footwear worn by a football player on the pitch. In this context, there was not merely a ‘very faint’ similarity between the DP Logo and the Umbro Marks, but in fact a ‘moderately high level of similarity’, giving rise to a likelihood of confusion on which basis Iconix’s claims of infringement succeeded.

 

The Supreme Court’s Decision

In a judgment given by Lord Briggs and Lord Stephens (with whom Lord Hodge, Lord Hamblen and Lady Rose agreed), the UKSC ultimately allowed Dream Pairs’ appeal, despite rejecting several of its arguments. The judgment addressed three key issues.

1. The ‘similarity issue’: Dream Pairs submitted that, when assessing whether the DP Logo and Umbro Marks are similar, extraneous circumstances such as how the goods are subsequently perceived should not be taken into account. Instead, it said the court should be confined to considering the intrinsic features of the marks on a side-by-side analysis, leaving aside any realistic and representative viewing angles in a post-sale context, unless they are the only ones from which the average consumer would ever encounter the DP Logo. The UKSC rejected this, and held 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. The UKSC pointed out that the HC had in fact done this: upon finding only a faint similarity on a side-by-side comparison, it turned to a global assessment in which realistic and representative viewing angles were considered.  This was crucial in the determination that the CA had not been justified in overturning the HC decision.

2. The ‘confusion issue’: Dream Pairs submitted that any post-sale confusion between the DP Logo and Umbro Marks should not amount to actionable infringement unless it involves confusion that affects or jeopardises the essential function of a trade mark as an indicator of origin at the point of sale or in a subsequent transactional context. In other words, post-sale confusion should not be a self-standing basis for infringement, but should only amount to infringement if it influences consumers when they actually make a purchasing choice at a later point in time. The UKSC rejected this, agreeing with the CA that “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.” After all, as several CJEU authorities have made clear, a trade mark continues to identify origin even after sale so that, in appropriate circumstances, infringement can arise on the basis of a likelihood of post-sale confusion.

3. Finally, was the CA justified in replacing the HC’s conclusion on the similarity of the marks with its own? The UKSC held that it was not. It acknowledged that, while reasonable judicial views might differ on the issue of similarity of the marks when viewed from an angle, the HC’s assessment was by no means irrational. The HC had not committed an error of principle in failing to consider the impact of the DP Logo in the post-sale context, because it had in fact considered this. Rather, in considering the multifactorial assessment of whether there was similarity between the marks, a likelihood of confusion and ultimately infringement, the HC had simply come to a different conclusion than the CA would have.

 

Comments

In affirming the relevance of post-sale confusion, the UKSC’s decision is welcome news for brands. The decision acknowledges the reality that brands are viewed by consumers as they are used, and that this is highly relevant to the assessment of similarity between trade marks.

• The decision is a reminder to brand owners bringing infringement claims that, in arguing post-sale confusion, it is essential to provide evidence to the trial court of all realistic and representative scenarios in which the marks in question are encountered. The function of a trade mark as an indicator of origin does not stop at the point of sale.
• Conversely, the decision should be a reminder to owners of new entrants to a market that they need to consider post-sale confusion when clearing their brands. Just because a side-by-side comparison shows a low similarity , that does not always mean there is necessarily no (or low) infringement risk. The likelihood of confusion may be higher due to the specific way the branded product is or will be used and marketed in the real world.
• Separately, the UKSC decision should caution litigants thinking about appeals. In its comments on the CA’s decision, the UKSC underscored that an appellate court should only overturn a lower court’s decision where a clear error of law or principle can be demonstrated, and not merely where the appellate court would have, in the multifactorial assessment, reached a different conclusion.

If you have queries on the decision and how it may affect your brand, please do get in touch with us or your regular DLA Piper contact.

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¹Chancery Division - [2023] EWHC 706 (Ch)
²Court of Appeal (Civil Division) - [2024] EWCA Civ 29