UK's Highest Court Recognizes Post-Sale Confusion as Relevant in Trademark Infringement Cases for the First Time
The UK Supreme Court has made a significant decision in the case of Iconix v Dream Pairs, marking the first time the court has considered the relevance of post-sale confusion in trade mark infringement cases.
The dispute concerned a trade mark infringement claim brought by Iconix, the owner of the Umbro brand, against Dream Pairs. Iconix holds UK registered figurative trade marks for its "double diamond" covering goods in class 25, including articles of clothing. Dream Pairs have been making use of a sign in relation to footwear in the UK since 2018.
In the High Court, Iconix alleged trade mark infringement under sections 10(2) and 10(3) of the Trade Marks Act 1994, but the court found no likelihood of confusion and therefore no infringement. However, the Court of Appeal overturned this decision, finding a moderately high degree of similarity in the post-sale context and a likelihood of confusion, thereby constituting infringement.
Dream Pairs took the case to the Supreme Court, challenging the Court of Appeal's conclusion on the first instance's judge's assessment and making two arguments of substantive trade mark law. The Supreme Court has affirmed that realistic and representative post-sale viewing angles can be taken into account for assessing similarity between a sign and a mark.
The Supreme Court has also clarified that post-sale confusion alone can form the basis of a trade mark infringement claim. This decision may lead to an increase in cases where brand owners challenge lookalike products based solely on post-sale confusion, particularly in industries where logos are less static when the product is in use, such as the fashion industry.
Brand owners need to think carefully about how a competing mark is perceived in the real world, such as when a product is being worn, to rely on post-sale confusion and potentially increase their scope of protection. The judgment effectively widens the scope of protection for registered trade marks.
The Supreme Court has stated that the Court of Appeal was wrong to interfere in the case, as the first instance judge's findings were not irrational or based on an error of principle. The court also emphasised that appellate courts should only intervene when there is an identifiable flaw in the first instance judgment.
The Supreme Court's decision may lead to fewer cases where the Court of Appeal or UKIPO appeal tribunals overturn multifactorial assessments moving forward. This decision provides valuable clarification regarding the relevance of post-sale confusion to trade mark infringement cases and serves as a reminder for brand owners to consider post-sale contexts when creating new logos, particularly for 2D shapes that can be distorted at different angles.
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