Change of perspective: Dream Pairs outsteps Umbro owner, Iconix, as UK Supreme Court reaffirms post-sale confusion doctrine

On 24 June 2025, the UK Supreme Court handed down its judgment in Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and another [2025] UKSC 25 finding that although in overturning the first instance decision, the Court of Appeal had handled the two main issues of law in the case correctly, it was nonetheless incorrect to have overturned the first instance Judge whose decision had been entirely rational based on the evidence in front of him.

Background

In 2021, Iconix Luxembourg Holdings SARL (“Iconix”) brought a claim for trade mark infringement against Dream Pairs Europe Inc and Top Glory Trading Group Inc (together, “Dream Pairs”) in relation to its Umbro brand.

Iconix has two registered trade marks in monochrome, these are:

• UK Trade Mark Registration No. UK00000991668 (a series of two marks, known as Mark 1) registered on 5 May 1972:

; and

• UK Trade Mark Registration No. UK00002172616 (known as Mark 2) registered on 5 March 1999:

Mark 1 is registered for “articles of clothing for use in sports, athletics or gymnastics” and Mark 2 is registered for various goods, including “footwear” (and all clothing). The Umbro Marks have been widely used on football boots in the UK since 1987, and has become known nationally for sportswear.

In late 2018, Dream Pairs began using the following Sign on their footwear in the UK (known as “the DP Sign”).

Dream Pairs almost exclusively advertised and sold their footwear on Amazon UK. They sold a variety of active footwear, namely football boots, with the DP Sign (sometimes with and sometimes without the words “DREAM PAIRS”).

Dream Pairs also has UK trade marks for the DP Sign with the words “DREAM PAIRS” underneath registered in January 2020.

Iconix alleged trade mark infringement under sections 10(2)(b) and 10(3) of the Trade Marks Act 1994 (“the Act”).

The High Court decision

In the High Court decision ([2023] EWHC 706 (Ch)) handed down on 28 March 2023, Miles J found that the DP Sign presented as “a tilted, broken, slightly rounded-off square with a P-like form in the middle” and that it “hardly” resembled the Umbro Marks of “a pair of sideways-sitting stretched-out diamonds”. Miles J stated that even where the photos of the product were angled affecting the perspective of the DP Sign, that it only held “the faintest resemblance” to the Umbro Marks. Therefore, the Judge concluded that there was no similarity between the Umbro Marks and the DP Sign and, from the perspective of an average consumer, found any similarity to be “very faint indeed”.

However, Miles J did find that the Umbro Marks were highly distinctive in character, with evidence supporting that the marks are very well known. The judgment continued that the average consumer would have had a “mental association” between the marks and the Umbro brand name. Usually, where it is found that a mark has acquired significant reputation and has a high degree of distinctiveness this tends to favour a finding of likelihood of confusion. However, Miles J applied this association as the reason why there would not be any confusion at the point of sale, finding an average consumer would note the references to Dream Pairs on the Amazon listings and the lack of reference to Umbro.

In relation to post-sale use and confusion, as Miles J had found the similarity to be low, they also found that an average consumer would not confuse the DP Sign with the Umbro Marks. Further, Miles J considered that there was no evidential basis to find that an average consumer would identify Dream Pairs products as a sub-brand or collaboration with Umbro. It was noted that Iconix relied on an image where a boot was muddy to show that in realistically likely situations there would be confusion, and although the Judge found this argument to have “force”, they highlighted that it does not show the use of the DP Sign leading to confusion rather the shape of the boot. Ultimately, Miles J found there was no infringement under s.10(2)(b).

It was also found there was no infringement under s.10(3), placing significant weight on the lack of similarity between the Umbro Marks and the DP Sign which meant the average consumer would not associate the two brands together.

The Court of Appeal decision

Iconix successfully appealed the High Court decision at the Court of Appeal [2024] EWCA Civ 29, which was handed down on 26 January 2024. Although a number of grounds were appealed, the principal argument that Iconix presented was that the Judge had failed to correctly assess the likelihood of post-sale confusion, with related grounds pursued concerning the assessment of the similarity between the Umbro Marks and DP Sign.

In relation to the assessment of the similarities between the signs, the Court of the Appeal found that the Judge erred in identifying that the “P-like form in the middle” of the DP Sign was the dominant and distinctive element of the sign. The Court of Appeal found that this was incorrect, and the DP Sign should have been considered as a whole, single sign. As this was not a composite sign, identifying this element altered the focus of the assessment in the differences between the signs. Further, they found that the conclusion that the similarity was only very faint was “rationally insupportable” considering that when affixed to footwear the similarity between the signs was “obvious”.

In relation to the assessment of post-sale confusion, the Court of Appeal referred to the examples of realistically likely situations assessed by Miles J. They found that the Judge’s decision-making had erred in principle by being unduly swayed by the side-by-side comparison of the graphic images of Mark 1 and the DP Sign. In contrast, the Court of Appeal considered that the angles and perspective that an average consumer would view the DP Sign for the first time on the product, for example looking down at the footwear, would significantly increase the likelihood of confusion, as the angle would cause the DP Sign to appear more like a double diamond.

The Court of Appeal judgment at para 12 stated 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”. Therefore, by focusing on the post-sale context, the Court of Appeal found that the DP Sign did infringe under s. 10(2)(b) as there was “a moderately high level of similarity” between Mark 1 and the DP Sign, and that there was a likelihood of confusion on the part of a significant proportion of consumers. It was accepted that any appeal in relation to s. 10(3) stood or fell with the s.10(2) appeal.

The Supreme Court decision

Dream Pairs appealed the decision to the Supreme Court ([2025] UKSC 25) on the following two issues of law:

• that the Court of Appeal incorrectly assessed the similarity of Mark 1 and the DP Sign by focusing on one angle, namely looking down from head height at the feet of another person wearing the footwear, referred to as the “Similarity issue”.
• that the Court of Appeal erred by when assessing post-sale confusion as a self-standing basis for infringement of a trade mark under s. 10(2)(b), pleading that the likelihood of confusion on the part of the public must be assessed as at the point of a subsequent sale or in a subsequent transactional context, referred to as the “Confusion issue”.

The Supreme Court then considered whether the Court of Appeal was entitled to re-make the decision.

The similarity issue

Dream Pairs argued that at the stage of assessing similarity, only the intrinsic features of the signs should be considered, without taking into account the circumstances of how they marketed or subsequently perceived in a post-sale environment. Then, only if similarities are found, a global assessment of the likelihood of confusion to the public should take place, considering the post-sale perspective. The Supreme Court found that this submission was without merit, as on the facts of the case Miles J did find a “faint” similarity, therefore a further assessment of confusion was required.

The alternative argument raised was that even if it was valid to consider the perspective in the post-sale environment when assessing similarity, the Court of Appeal erred in their assessment as the “head height” angle is not the only perspective from which the average consumer would ever encounter the DP Sign. Therefore, for this angle to be taken into account, it has to be the unique and only viewpoint. Once again, the Supreme Court found that this submission was without merit as the “realistic and representative viewing angle” should be considered on the facts of the case.

In conclusion, the Supreme Court found that “realistic and representative post-sale circumstances” can be taken into account for the purpose of establishing whether the signs at issue are similar. As part of their finding, they repeatedly referred to the CJEU decision, European Union Intellectual Property Office v Equivalenza Manufactory SL (Case C-328/18 P), clarifying that this decision did apply in relation to infringement proceedings, so post-sale circumstances cannot be used to rule out intrinsic similarities between the sign, but that this would not be an authority that at the stage of assessing similarity post-sale circumstances cannot be considered to establish similarities between signs.

The Supreme Court unanimously rejected this ground of appeal.

The confusion issue

Dream Pairs argued that infringement cannot be found, even where there is post-sale confusion, if that post-sale confusion does not affect or jeopardise the essential function of a trade mark as a guarantee of origin at the point of a subsequent sale or in a subsequent transactional context.

The Supreme Court considered the application of the authority, Arsenal Football Club plc v Reed (Case C-206/01) [2003] Ch 454, in-depth. They found in this case, that it supported the position the post-sale context can be taken into account and did not limit post-sale confusion to the perceptions at the point of a subsequent sale. They continued to review additional CJEU decisions, finding that when considering the perceived “attentiveness” of the consumer, it is at the moment that the consumer is making the choice between the goods and signs.

The Supreme Court rejected Dream Pairs’ argument, concluding that the likelihood of confusion requirement can be established on post-sale confusion alone. Further, they found that Dream Pair’s position would conflict with s. 10(4) of the Act which allows for different uses which would be remote in time from the point when a purchase or transaction is concluded, such as in advertising.

The Supreme Court unanimously rejected this ground of appeal.

Should the first instance decision have been overturned?

It is noted that the Supreme Court designated a significant portion of their judgment to highlight the role of an appellate court. They stated there are “structured constraints” on the Court of Appeal when considering the decision of a lower court and found the criticisms made by the Court of Appeal to be “misplaced”. The Supreme Court went on to emphasise, that although it is perhaps “inevitable” for judges to come to different conclusions when answering multifactorial questions, that it is not their task “to form their own view”, but to consider whether the Judge’s decision was rationally made. In their view, Miles J’s assessment was “by no means irrational”.

The Supreme Court went through High Court’s first instance decision regarding similarity between the signs in detail and found that there was no irrationality, error of law or error of principle in Miles J’s approach or decision-making. The Supreme Court found that the Court of Appeal was not justified in overturning the decision and upheld the first instance decision that no infringement had taken place.

Conclusion

Ultimately, the issues of law which allowed Dream Pairs to be granted permission to appeal at the Supreme Court were not determinative in the outcome of the appeal. The strong position that the Supreme Court took in assessing and supporting the High Court first instance decision, reinforces the importance of the first instance trial and ensuring that your best case is put forward from the start.

The Supreme Court chose to use this judgment to reaffirm the alignment of the UK’s position on post-sale confusion to EU. Post-sale confusion can amount to actionable infringement, without the need for point of sale confusion. For brand owners, it is important to monitor and document use in “real-world” environments such as on social media and in retail. When clearing a new trade mark, owners must consider not only how their sign looks in a side by side comparison, but how it will be perceived in the real-world, including in post-sale context – it’s all about perspective.

This article was authored by Geoff Hussey and Lindsey Morden.