Brand owners will benefit, in particular, from the Supreme Court’s conclusion that consumer confusion between a brand and third-party signs can be enough to give rise to a trade mark infringement claim, even if the consumer does not make a purchasing decision based on that confusion.

This judgment serves as another reminder that whilst judges can come to completely different conclusions when assessing similarity and likelihood of confusion, appellate courts should not interfere with trial judges’ factual findings unless there is a clear error of law or irrationality.

Background

Iconix Luxembourg Holdings SARL owns the Umbro brand, including its famous “double diamond” logo, registered as UK trade marks and used on football boots since 1987.

Dream Pairs Europe Inc began selling footwear in the UK in 2018 featuring a “DP sign” logo, which Iconix argued was confusingly similar to the Umbro trade marks.

Procedural history

Iconix issued a claim against Dream Pairs for trade mark infringement under sections 10(2) and 10(3) of the Trade Marks Act 1994, alleging that the DP sign was likely to cause consumer confusion, including after the point of sale (post-sale confusion).

Court of first instance (High Court): dismissed Iconix’s claim, finding only a “very faint” similarity between the Umbro trade marks and the DP sign and no likelihood of consumer confusion, either at the point of sale or post-sale.

Court of Appeal: overturned the decision of the High Court, holding that the trial judge’s findings were “irrational”. The Court of Appeal found a “moderately high” similarity in the post-sale context (for example, when the product is seen on someone in public) and a likelihood of confusion among a significant proportion of consumers.

Supreme Court: unanimously allowed Dream Pairs’ appeal, meaning the High Court’s decision that the DP sign did not infringe the Umbro trade marks was restored.

The Supreme Court’s approach

1. Assessment of similarity: The Supreme Court clarified that when assessing similarity, the court will consider how the sign will be perceived in use (for example, when the logo is seen on a football boot worn on the street, or on the pitch!) for the purpose of establishing whether the signs at issue are similar and, if so, the degree of similarity. Importantly, this includes when consumers see the sign from realistic viewpoints and angles, not just in a paper based side-by-side comparison divorced of real-life context.
2. Assessment of confusion: The Supreme Court clarified that where a passer-by is confused by a third-party sign and a registered trade mark, this can be enough in itself to establish confusion, and so a claim for trade mark infringement. The consumer does not need to make a transactional decision (that is, purchase of a third-party product because it wrongly thinks the brand owner is responsible for the product) in order for a trade mark infringement claim to arise. Confusion in itself is enough.
3. Appellate review: The Supreme Court emphasised that appellate courts should not interfere with trial judges’ assessments on factual findings unless there is a clear error of law or irrationality, which the Supreme Court found there was not. Instead, the court considered the trial judge had undertaken a proper assessment (including post-sale confusion) and therefore the Court of Appeal should not have interfered. It is important, therefore, for brand owners to make their best case the first time round.

In short

This Supreme Court decision highlights the relevance of post-sale confusion to the assessment of similarity and confusion in UK trade mark infringement matters.

Case details at a glance

Jurisdiction: England & Wales
Decision level: Supreme Court
Parties: Iconix Luxembourg Holdings SARL (respondent) v Dream Pairs Europe Inc and another (appellants)
Date: 24 June 2025
Citation: [2025] UKSC 25
Decision (PDF): dycip.com/2025-UKSC-25