July 2025 Can the way a logo appears on a pair of football boots lead to trade mark infringement? The answer to this question and further clarification on the concept of “post-sale confusion”, was provided in Iconix v Dream Pairs, a case that recently reached the UK Supreme Court. In its judgment, the Court offered long-awaited clarification on whether a likelihood of consumer confusion must arise at the point of sale, or whether confusion occurring later, such as when a logo is seen on the side of football boots from the sideline of a football pitch, can also be relevant in determining infringement.
Background
In a recent UK Supreme Court Case, Iconix, the owner of Umbro, brought a claim against Dream Pairs under section 10(2) of the Trade Marks Act 1994. Iconix argued that Dream Pairs’ stylised “DP” sign (the “DP logo”), when used on footwear, was confusingly similar to Umbro’s well-known double‑diamond marks, even if any confusion arose only after the point of sale.
The dispute concerns the logos of the two brands which appear on their respective footwear products:
Umbro’s well-known “double diamond” device mark, is represented by two UK trade mark registrations: No. 991668, registered from 1972 for “articles of clothing for use in sports, athletics and gymnastics” in Class 25, and No. 903266459, registered from 2003 for a broader range of goods including “clothing, footwear and headgear” in Class 25 (collectively referred to as the “Umbro marks”).
Dream Pair’s logo, features a diamond-shaped logo consisting of an outer letter ‘D’ and an inner letter ‘P’ (the “DP logo”). While Dream Pairs’ UK application to register the DP logo alone as a trade mark is currently pending, a composite mark combining the DP logo with the words “Dream Pairs” has already been successfully registered.
First Instance Decisions
At first instance, the High Court acknowledged that the Umbro marks were well‑known and registered for sports footwear. It was also acknowledged that the goods were identical for both the Umbro marks and the DP logo (both parties sold sports footwear), so the dispute hinged primarily on mark similarity and consumer confusion.
Initially, the High Court deemed, that the DP logo only bore “at most a very faint degree of similarity” to the Umbro marks and that Dream Pairs’ “P” element dominated the overall impression of the mark. The High Court dismissed Iconix’s infringement claim, holding that the average consumer would pay at least moderate attention both at purchase and afterward, and that no likelihood of confusion arose. The initial High Court judgement involved comparison of the logos side by side and photos of them on shoes. The judge asserted that a multifactorial assessment of the marks was undertaken but ultimately it was found the marks’ resemblance too slight to confuse consumers.
As to whether Dream Pairs had taken unfair advantage of the Umbro marks, the High Court found that it had not; it held that while there was evidence to support that Umbro’s trade marks were distinctive and famous, but there was no direct evidence consumers had actually been deceived.
Iconix appealed the infringement decision to the Court of Appeal, who allowed the appeal. The Court of Appeal held that High Court’s finding of “very low” similarity was rationally insupportable and went on to find that the High Court had made an incorrect assessment of the likelihood of post-sale confusion.
The Court of Appeal found that the judge had been unduly focused on flat, graphic comparisons of the marks, and had erred by ignoring realistic viewing angles when the DP logo appears on a worn shoe in the post-sale context. The Court of Appeal reasoned that for example seeing a person wearing Dream Pairs boots on the pitch from above, the tilted DP logo more closely resembles the Umbro marks.
The Court of Appeal concluded there was in fact a “moderately high” level of similarity between the signs in this context, and that a significant proportion of consumers would likely be confused. In short, the Court of Appeal found that a realistic view of the mark, for example on a football boot could lead to a likelihood of confusion between the DP logo and the Umbro marks, so Iconix’s infringement claim succeeded at appeal.
Supreme Court Decision
However, in a judgment given by Lord Briggs and Lord Stephens (with whom the other Justices agreed), the UK Supreme Court unanimously allowed Dream Pairs’ appeal, restoring the original High Court judgment.
In the judgment, it was confirmed that realistic, post-sale circumstances should be taken into account when comparing marks. In particular, the Court held that courts may consider “realistic and representative” angles and contexts in which consumers will see the sign on the product.
Moreover, the Court emphasised that the Court of Appeal should not lightly substitute its own view in a multifactorial assessment of a mark in the absence of a clear error.
The Supreme Court stated that it found no error of law or irrationality in the High Court’s reasoning. It noted that the High Court had considered the shoes’ appearance in use (the DP logo on a boot), and that reasonable judges could differ on whether that made the signs similar. Because the first judge’s conclusions were not “plainly wrong”, the Court of Appeal should not have replaced them. Ultimately, the Supreme Court held that the Court of Appeal erred by re‑evaluating similarity in the absence of a clear error, and so upheld the High Court’s finding of no infringement.
The Supreme Court also addressed whether post‑sale confusion is actionable under section 10(2). Dream Pairs had argued that any confusion after sale could only amount to infringement if it still affected the mark’s function as an origin guarantee at the next purchase. The Supreme Court rejected that limitation. It reaffirmed that a trade mark continues to identify origin even after sale, and that confusion arising later can still indicate that consumers are misled about origin. As the Court put it, 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”. Thus, post‑sale confusion remains a valid basis for infringement under section 10(2), consistent with CJEU precedent.
Finally, the Supreme Court clarified how realistic, post‑sale contexts impact the similarity assessment of two marks. It held that courts should first compare the intrinsic features of the marks, then (if any similarity is found) proceed to a global assessment of confusion. Realistic post‑sale scenarios may be used to gauge whether the overall impression is similar or confusing. For example, if the DP logo on a boot truly appears closer to the Umbro mark when viewed from a typical angle, that fact may be considered in assessing similarity. However, the Supreme Court emphasised that such scenarios must be “plausible” and representative of the average consumer’s experience.
Concluding Remarks
This decision serves as a reminder that post‑sale confusion matters and should always be considered for new and existing trade marks. The Supreme Court confirmed that confusion arising after purchase can be an actionable ground of infringement. Trade Mark owners should recognise that a trademark’s protection extends beyond the point of sale. In practice, this means evidence of how marks look and are perceived in actual use (for example on football boots) may be crucial to an infringement claim.
From a litigation standpoint, this decision also highlights that evidence of realistic use is vital. Litigants should gather and present evidence of “realistic and representative” ways consumers will encounter the marks. For example, photos or expert simulations of the sign on products in typical settings can help establish whether any similarity is appreciable.
Furthermore when clearing new trade marks, owners should similarly consider these contexts: a side‑by‑side comparison of logos in isolation may understate confusion risks if the sign is viewed differently in reality.
The sequence of decisions in these proceedings also cemented the fact that unless a first instance judge’s assessment is irrational or legally flawed, a subsequent court on appeal should not simply substitute its own view. In this judgement, both the High Court and Supreme Court agreed that the initial global assessment was open to reasonable disagreement. This outcome warns litigants that strong evidence at first instance is crucial, as the trial judge’s conclusions may stand even if an appeal court might have decided differently.
Finally, this decision also highlights that infringement and clearance strategies may need to adapt. For trademark owners, this case broadens the scope of infringement claims. Following this decision, trademark owners can lawfully argue confusion in the post‑sale setting. For third parties (and trademark filers), it signals that clearance searches and clearance analysis must go beyond static logo comparisons. Overall, Iconix v Dream Pairs encourages careful presentation of real-world use cases in court, and may make litigants more cautious about appealing a multifactorial assessment of a mark without clear legal errors.
