The recent UK Supreme Court judgment in Iconix v. Dream Pairs was hotly anticipated by brand owners and trade mark practitioners. As expected, it has provided much needed clarity on the development of the doctrine of post-sale confusion in English trademark law. In so doing, the Court has affirmed that: 

• Brand owners will have a new and potentially powerful tool to combat dupes and copycat products
• Rights holders will need to consider more and different evidence of confusion when assessing and pursuing IP infringement claims

A recap of the decision

As a reminder, post-sale confusion refers to a situation where confusion about the origin of a product arises not at the point of purchase, but after the product has been sold and is seen in use. Under this doctrine, trademark infringement can occur if someone sees a product in public (such as a pair of shoes or a handbag) and is misled into believing it originates from a particular brand, even though the original purchaser was not confused at the time of sale.

While this doctrine has been widely acknowledged in English law, it had never been fully tested at the highest judicial level. Iconix v. Dream Pairs was the first opportunity for the UK Supreme Court to provide detailed guidance about this type of confusion. Importantly, it considered:

• The circumstances in which post-sale confusion can lead to a finding of trademark infringement; and 
• The approach that the courts should take when assessing similarity and likelihood of confusion 

The UKSC also provided some important guidance about the scope of the Court of Appeal’s role, but this is not addressed in this article. 

Post-sale confusion as actionable infringement

Critically, the Supreme Court unequivocally endorsed post-sale confusion as a basis for trademark infringement. The court rejected the argument that only confusion at the point of sale or in a transactional context is actionable. Instead, it held that confusion arising after the sale (e.g., when a third party sees a product in use and is misled as to its origin) can be sufficient by itself to infringe a trademark.

In doing so, the Supreme Court recognized that trademarks can function as badges of origin not only for purchasers but also for third parties who encounter the goods post-sale. This is particularly relevant for products such as footwear or clothing, which are frequently seen and recognized in public after purchase.

Assessment of similarity – realistic and representative circumstances

The Supreme Court also clarified that, when assessing similarity, courts are entitled to consider how the sign is perceived in the real world (i.e., realistic and representative post-sale circumstances). For example, the way a logo appears on a football boot when viewed from above during a match may be more relevant than a side-by-side or “head-on” comparison of the marks.

What does this mean for you?

As mentioned, the decision should have significant implications from a brand perspective.

1. Brands have an additional tool to fight dupes

Since confusion does not need to occur in the context of a sale transaction to be actionable, rights holders have an additional tool at their disposal to protect their marks against lookalike products or “dupes” that may cause confusion after the point of sale. This is likely to be highly relevant in industries where brand value is tied to public recognition and social visibility (e.g., fashion and luxury goods). 

Another consequence of this may be that some “risk minimizing” measures that have previously been taken by sellers of dupe or copycat products (for example, point-of-sale disclaimers) may no longer be sufficient to keep them “safe.” For rights holders combating these practices, this may open up the possibility of seeking enforcement against certain businesses that could not previously be pursued.

2. New post-sale evidence may be needed

The Iconix decision may also change the nature and scope of evidence in trademark litigation. Parties that are contemplating enforcement action may now need to consider and present contextual evidence showing how relevant signs are actually perceived post-sale. Factors such as viewing angles, social settings and third-party perception may become critical in pleadings, expert evidence and witness testimony.

This means that in-house teams may have to consider broadening the scope of the evidence they gather about potential infringers and potentially even include new forms of evidence altogether, before the business or its external advisors can form a comprehensive view on the potential merits of a contemplated enforcement claim.