The relevance of post-sale confusion in modern IP law: The Iconix case

Post-sale confusion is an increasingly significant concept in UK trade mark law. It refers to the potential for consumer confusion after a product has been purchased and is in use, rather than at the point of sale. Historically, English law offered little guidance on this issue. However, the recent Supreme Court decision in Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc [2025] UKSC 25 has brought this concept into sharp focus, marking a pivotal development in trade mark law.

Background

Iconix owns the UMBRO sportswear brand and its associated trade marks, including the iconic “double diamond” logo, widely used in the UK on sportswear and football boots.

Dream Pairs Europe Inc (“Dream Pairs”) began using its “DP sign” in 2018 on various footwear products, including football boots. Iconix sued Dream Pairs for trade mark infringement under section 10(2) of the Trade Marks Act 1994, alleging that the DP sign was sufficiently similar to the UMBRO marks to cause confusion.

Initial decisions

The High Court dismissed Iconix’s claim, finding minimal similarity between the marks and no likelihood of confusion. The Court of Appeal, however, reversed this decision. It held that, in a post-sale context, the marks exhibited a moderately high degree of similarity, particularly when the DP sign appeared on football boots, and that this could lead to confusion among a significant proportion of consumers.

Issues before the Supreme Court

Dream Pairs appealed to the Supreme Court, which addressed two critical questions:

1. Can “realistic and representative” post-sale scenarios be considered when assessing trade mark similarity?
2. Can post-sale confusion alone constitute infringement, even if no confusion exists at the point of sale?

The Court confirmed that similarity may be assessed under realistic post-sale conditions (such as viewing the DP sign on football boots worn by someone else), reflecting how consumers encounter branded goods in everyday life.

More importantly, the Court held that a likelihood of post-sale confusion is sufficient on its own to establish infringement under section 10(2), even if confusion does not occur at purchase. While Dream Pairs’ online sales (e.g., via Amazon UK) included contextual indicators reducing point of sale confusion, this did not negate the risk of confusion after the sale.

Why this Decision matters

UK trade mark law has traditionally focused on the perspective of the average consumer at the point of sale. Although post-sale confusion has been hinted at in EU case law (such as Arsenal Football Club plc v Reed (Case C-206/01) [2003] Ch 454) it was never fully explored. The Iconix decision makes it a central consideration, expanding the scope of infringement analysis beyond the purchase moment.

Key Takeaways

• Trade mark protection now extends to post-sale perceptions, not just point of sale interactions.
• Businesses face increased risk when adopting marks that resemble established brands, even if initial purchase conditions minimise confusion.
• The ruling underscores the importance of considering real-world consumer encounters with branded goods when assessing infringement.