Whose Shoes Are You Wearing? Post-Sale Confusion in Iconix v Dream Pairs

Kyrana Hulstein and Marc Linsner, ‘Whose Shoes Are You Wearing? Post-Sale Confusion in Iconix v Dream Pairs: a summary of Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc [2025] UKSC 25 (September 2025) Intellectual Property Forum Journal 141.'

On 24 June 2025, the United Kingdom (“UK”) Supreme Court unanimously allowed an appeal against the Court of Appeal’s decision in Iconix v Dream Pairs¹. The Supreme Court’s decision addresses fundamental issues regarding the approach to assessing the similarity of signs in trade mark infringement claims and the legal status of post-sale confusion as a standalone form of actionable trade mark infringement. 

In allowing the appeal, the Supreme Court rejected Dream Pairs’ arguments that realistic post-sale circumstances cannot be considered when assessing the similarity of the marks. The Supreme Court also rejected Dream Pairs’ argument that only a narrow form of post-sale confusion that jeopardises the origin function in a subsequent transactional context can amount to an actionable infringement. Despite disagreeing with Dream Pairs on these points, the Supreme Court agreed with Dream Pairs’ argument that there was no irrationality or error of principle or law which justified the Court of Appeal interfering with the multifactorial assessment conducted by the High Court judge at first instance.

Background

Iconix is the registered proprietor of two trade marks (the “Umbro Trade Marks”, pictured below), which have been used as logos on football boots and football apparel in the UK since the late 1980s. Since 2018, Dream Pairs has sold a variety of footwear branded with a logo (the “DP Sign”, pictured below) in the UK, via Amazon and eBay.

Iconix sued Dream Pairs for infringement of the Umbro Trade Marks on the basis that the DP Sign was confusingly similar.

At first instance, Iconix’s claim was dismissed by the High Court, which found that there was a very low degree of similarity between the Umbro Trade Marks and the DP Sign, and no likelihood of confusion. 

Iconix appealed to the Court of Appeal, which allowed the appeal. The Court of Appeal, led by Arnold LJ, held that the High Court’s finding of a very low degree of similarity between the Umbro Trade Marks and DP Sign was irrational when one considered the DP Sign affixed to footwear from any angle other than square on. Moreover, Arnold LJ found that the trial judge had erred when assessing the existence of post-sale confusion by placing too much emphasis on a side-by-side comparison of the signs, and failing to appreciate that consumers would see the DP Sign at different angles in a post-sale context.

Based on these perceived errors of principle, the Court of Appeal conducted the multi-factorial assessment of similarity and confusion afresh. In doing so, Arnold LJ concluded that there was a moderately high level of similarity when considered in a post-sale context, especially when the DP Sign was viewed on a football boot by a consumer standing nearby and looking down at the boot.

Dream Pairs’ Appeal

Dream Pairs appealed to the Supreme Court on the basis that the trial judge had not reached any irrational conclusions nor made any error of law or principle, sufficient to entitle the Court of Appeal to reassess the issues of similarity and likelihood of confusion.

Dream Pairs also submitted that the Court of Appeal’s approach suffered from two errors of law:

1. At the stage of assessing whether the signs are similar, the Court of Appeal should not have considered extraneous circumstances such as how the goods are marketed or subsequently perceived by consumers. This was referred to by the Supreme Court as the “Similarity Issue”.
2. The Court of Appeal was wrong to consider post-sale confusion a standalone basis for infringement of a trade mark under s.10(2)(b) of the Trade Marks Act 1994 (“TMA”). Instead, Dream Pairs tried to argue, post-sale confusion is only actionable if a sign adversely affects the origin function of a trade mark in a subsequent transactional context. The Supreme Court referred to this as the “Confusion Issue”.

Supreme Court’s Judgment

The Similarity Issue

At first instance, the judge found that there was at most a very low degree of similarity between the DP Sign and the Umbro Trade Marks. The Court of Appeal disagreed on the basis that the DP Sign and Umbro Trade Marks are similar to a moderately high degree when considered from the perspective of the average consumer looking down at the DP Sign on a pair of football boots (or from any angle other than square on).

Dream Pairs challenged Arnold LJ’s finding that extraneous circumstances, such as how the goods are perceived in a post-sale environment, were relevant to the assessment of similarity. It argued that the Court of Appeal should have conducted a side-by-side analysis of the intrinsic features of the marks, and if the marks were intrinsically dissimilar, it should not have proceeded to the assessment of likelihood of confusion. According to Dream Pairs, it is only if the marks are intrinsically similar that a court should consider extraneous circumstances as part of the global assessment of likelihood of confusion.

Moreover, Dream Pairs argued that the viewpoint of an onlooker in the post-sale context should only be taken into account in the assessment of similarity if it is the only viewpoint from which the average consumer would ever encounter the sign.

For those reasons, Dream Pairs argued that Arnold LJ had been wrong to consider the angle at which consumers would perceive the marks in a real-world scenario as part of the assessment of similarity. 

The Supreme Court dismissed Dream Pairs’ arguments, on the basis that the first instance judge had found faint resemblance between the DP Sign and the Umbro Trade Marks based solely on a side-by-side comparison of images of the marks. Therefore, regardless of when the extraneous circumstances were taken into account, the marks in question were sufficiently similar to assess whether a likelihood of confusion existed.

Nevertheless, the Supreme Court went on to consider the legal merit of Dream Pairs’ argument. The Court analysed the decision in EUIPO v Equivalenza², in which the Court of Justice of the European Union (“CJEU”) found that the General Court had been wrong to consider the circumstances in which the goods in question were marketed to eliminate similarities between the marks. The Supreme Court distinguished Equivalenza and the present case on the basis that while the latter precludes reliance on post-sale circumstances to rule out intrinsic similarities between marks, it does not prevent consideration of such circumstances to establish similarities between marks. 

The Supreme Court concluded that realistic and representative post-sale circumstances may be taken into account for the purpose of establishing similarity between marks. To dismiss a likelihood of confusion in situations where the marks are similar in a realistic post-sale context would be inconsistent with the requirement for a global assessment where there is any degree of similarity between the signs at issue. Similarly, the Supreme Court confirmed that assessing similarity by reference to how the signs are perceived in a post-sale context is consistent with the CJEU’s guidance from Equivalenza that the comparison of the signs must be based on the overall impression those signs make on the relevant public.

The Confusion Issue

At first instance, the judge found that there was no likelihood of confusion between the DP Sign and the Umbro Trade Marks at the point of sale. Moreover, the judge found no likelihood of post-sale confusion because a consumer who saw someone wearing shoes bearing the DP Sign would not confuse them with the Umbro Trade Marks given the differences between the signs (based on a side-by-side comparison of photos of the signs).

The Court of Appeal disagreed with the judge’s approach. Arnold LJ held that when considered from the perspective of a consumer encountering the DP Sign for the first time in a post-sale context, the DP Sign and Umbro Trade Marks shared a moderately high degree of similarity which gave rise to a likelihood of post-sale confusion. 

On appeal, Dream Pairs argued that post-sale confusion is limited to circumstances where it jeopardises the origin function of a trade mark at the point of a subsequent sale or in a subsequent transactional context. Dream Pairs relied on several authorities recognising post-sale confusion and submitted that because in each case the court also made a finding of confusion at the point of sale, post-sale confusion could not exist independently of point of sale confusion.

The Supreme Court considered each of the authorities relied on by Dream Pairs and held that none supported Dream Pairs’ submissions. Instead, the Supreme Court endorsed the concept of post-sale confusion introduced in Arsenal v Reed³, and further developed by Arnold LJ in Datacard⁴ and Swatch v Samsung⁵ – namely that a trade mark continues to identify origin even after a sale and can therefore give rise to infringement based on likelihood of post-sale confusion, including outside of a subsequent sale or subsequent transactional context.

Role of the Appellate Court

Although the Supreme Court dismissed Dream Pairs’ substantive arguments on trade mark law, it ultimately allowed the appeal on the basis that the Court of Appeal should not have interfered with the trial judge’s decision. The Supreme Court criticised the Court of Appeal for overstepping in circumstances when the judge had carefully considered the evidence and made no errors of principle or irrational conclusions. The Supreme Court noted:

With respect, [the Court of Appeal] appear[s] 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 Iconix⁶.

Comment

Although there is a line of established authority recognising post-sale confusion, the concept has always been saddled with scepticism. The Supreme Court’s judgment should dispel any lingering scepticism and bring welcome clarity by unequivocally confirming that post-sale confusion can give rise to trade mark infringement even without confusion at the point of sale.  

The decision will be particularly impactful for certain sectors, such as the fashion industry, where trade marks often appear differently when being used by consumers to how they appear at the point-of-sale. Similarly, the affirmation of post-sale confusion is likely to strengthen claims against lookalikes. Traditionally, confusion claims have failed in a lookalike context because consumers are deemed to know the products they are purchasing in a retail environment, but the Supreme Court’s judgment may now give brand owners greater scope to argue that consumers will be confused when they encounter lookalikes in post-sale environments where the point-of-sale context is absent. Iconix v Dream Pairs appears to have joined a line of recent authorities including Thatchers Cider v Aldi⁷, Lidl v Tesco⁸ and M&S v Aldi⁹ moving towards a greater level of protection for brand owners against lookalike products.

The decision is also noteworthy for its finding that realistic post-sale circumstances can be considered when assessing the similarity of the marks. Moving forward, as case law develops, it will be interesting to see how this concept evolves and how liberally the courts interpret “realistic and representative” post-sale factors to account for real-world scenarios when assessing infringement in each case.

While the Supreme Court’s judgment considers the relevance of post-sale factors specifically, the judgment could potentially open the door for the re-emergence of initial interest confusion. The judgment lays the foundations for the courts to take a more holistic view of the real-world consumer journey, which could encompass not only the post-sale context, but also the pre-sale context and consumers’ initial perceptions of the marks in question. Now that Arnold LJ is sitting as an appeal judge, a future case could present an opportunity to revive the initial interest doctrine he originally established in Och-Ziff¹⁰.

Footnotes

[1] Iconix Luxembourg Holdings Sarl v Dream Pairs Europe Inc [2024] EWCA Civ 29.

[2] European Union Intellectual Property Office v Equivalenza Manufactory SL (Case C-328/18 P).

[3] Arsenal Football Club plc v Reed (Case C-206/01) [2003] Ch 45.

[4] Datacard Corporation v Eagle Technologies Ltd [2011] EWHC 244 (Pat) at [277].

[5] Montres Breguet SA v Samsung Electronics Co Ltd [2023] EWCA Civ 1478.

[6] Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc [2025] UKSC 25 at [114].

[7] Thatchers Cider Co Ltd v Aldi Stores Ltd [2025] EWCA Civ 5.

[8] Lidl Great Britain Ltd v Tesco Stores Ltd [2024] EWCA Civ 262.

[9] Marks and Spencer Plc v Aldi Stores Ltd [2024] EWCA Civ 178.

[10] Och-Ziff Management Europe Ltd v Och Capital LLP [2010] EWHC 2599 (Ch).