Umbro decision - UK Supreme Court confirms post-sale confusion alone can be enough to find trade mark infringement

Yesterday saw the decision of the UK Supreme Court in Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and another [2025] UKSC 25. 

Iconix owns the well-known sportswear brand UMBRO and is the registered proprietor of two diamond trade marks, including the following which has been registered in relation to articles of clothing for use in sports since 1972: 

Dream Pairs has sold a variety of footwear using the following sign:

Iconix's claim was dismissed at first instance in 2023 when the judge decided there was only a very faint resemblance to the Umbro trade marks. However, Iconix went on to be successful on appeal in 2024 with the Court of Appeal finding that the judge at first instance's decision on similarity was irrational and that he had made errors in principle. Trade mark infringement was found under s10(2)(b) Trade Marks Act 1994. 

Dream Pairs appealed to the Supreme Court, which has reinstated the High Court's original ruling. It stated that the Court of Appeal's criticism of the first instance judge was misplaced and that reasonable minds can reach different conclusions. Without irrationality or error of principle or of law (which were not found) the Court of Appeal was not justified in substituting their own different views of the answer to the multifactorial assessment of similarity and confusion.

Although Dream Pairs was successful, the Supreme Court did not agree with its arguments relating to post-sale confusion. 

We already know from previous decisions that post-sale confusion can be taken into account when assessing infringement under s10(2)(b). 

The Supreme Court in this decision has now confirmed (in agreement with Arnold LJ in the appeal of this case) 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.” In doing so, the Supreme Court rejected Dream Pairs' submission that “…only post-sale confusion affecting or jeopardising 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 can amount to an actionable infringement." and that "…before there is an actionable infringement the post-sale confusion must result in damage at the point of sale or in a transactional context in the sense of influencing consumers when they make a choice with respect to the goods or services in question…”

The real-world consequence of this could be significant for brand owners as the scope for successful trade mark infringement claims may now be wider. Brand owners will not need to rely solely on a side by side comparison and confusion at the point of sale. If, for example, there are contextual factors at the point of sale that make confusion unlikely, if relevant post-sale evidence of confusion can be adduced it might just get you over the hurdle.