The Supreme Court's Judgment in Iconix v Dream Pairs
UK Supreme Court (Lords Hodge, Briggs, Hamblen and Stephens and Lady Rose) Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and another [2025] UKSC 25 (24 Jun 2025)
This was an appeal by Dream Pairs Europe Inc. and Top Glory Trading Group Inc. ("Dream Pairs") against the Court of Appeal's judgment in Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and another [2024] EWCA Civ 29, [2024] RPC 10 which I discussed in Trade Marks - Iconix's Appeal on 5 Feb 2025. The Court of Appeal allowed an appeal by Iconix Luxembourg Holdings SARL ("Iconix") against Mr Justice Miles's dismissal of Iconix's claim for trade mark infringement under s.10 (2) and (3) of the Trade Marks Act 1994 in Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and another [2023] RPC 15, [2023] EWHC 706 (Ch). I wrote about Mr Justice Miles's judgment in Trade Marks - Iconix Luxembourg Holdings SARL v Dream Pairs Europe on 31 Mar 2023.
Press Summary
Readers who have not followed this litigation will find the Supreme Court's press summary useful. There, they will find summaries of the issues and facts as well as links to the judgment in PDF and HTML formats. There are also videos of the hearings that took place on 17 and 18 March 2025, as well as a link to a YouTube video of Lord Stephens delivering a summary of the judgment on 24 June 2025. Links to the biographies of the Supreme Court Justices who decided the appeal also appear in the press summary.
The Marks and Sign
Iconoix is the registered proprietor of the following UK trade marks:
 |
Dream Pairs has registered the following sign ("the DP sign") as a trade mark in the UK:
Dream Pairs sold football boots marked with the DP sign in the UK through Amazon and eBay.
The Litigation
Iconix brought the above-mentioned trade mark infringement proceedings against Dream Pairs on 19 Jul 2021.
Mr Justice Miles dismissed Iconix's claim because he found "at most a very low degree of similarity" between its registered marks and the DP sign and no likelihood of confusion between the two in the mind of the average consumer.
The Court of Appeal held that:
(ii) his lordship had erred in principle by being unduly swayed by a side-by-side comparison of the 668 Mark and the DP sign, particularly looking at their graphic images rather than when affixed to footwear, for the purpose of assessing post-sale confusion; and
(iii) he had erred in principle by failing to appreciate that, in the post-sale context, the average consumer would see the DP Sign from an angle, and in particular from above, rather than sideways-on, as when viewed at the point of sale.
Dream Pairs challenged the Court of Appeal's finding that the judge had reached an irrational conclusion or made any error of law or principle, sufficient to entitle the Court to make the similarity and confusion appraisal afresh.
"(i) there must be use of a sign by a third party within the UK; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is at least similar to the trade mark; (v) it must be in relation to goods or services which are at least similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion on the part of the public."
"In short, in order to assess the degree of similarity between the marks concerned, the court must determine the degree of visual, aural (or phonetic) and conceptual similarity between them."
"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion."
"In my judgment the general position is now clear. In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer's mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context."
(iii) he had erred in principle by failing to appreciate that, in the post-sale context, the average consumer would see the DP Sign from an angle, and in particular from above, rather than sideways-on, as when viewed at the point of sale.
Those perceived errors led the Court of Appeal to conduct the multi-factorial assessment of similarity and likelihood of confusion afresh. Doing so, it concluded that Iconix's case under s.10 (2) (b) had been made good, because:
(a) there was "a moderately high level of similarity" between the 668 Mark and the DP sign in the post-sale context, in particular when the DP sign was viewed on a football boot being worn at a game, by a viewer standing nearby and looking down at it; and
(b) there was a likelihood of confusion on the part of a significant proportion of consumers.
Grounds of Appeal
They also submitted that the Court of Appeal's own approach involved two significant errors of law in the following issues:
(i) Similarity Issue: When assessing whether the DP sign and the 668 Mark were similar and, if so, the degree of similarity, Dream Pairs argued that extraneous circumstances, such as how the goods are subsequently perceived, should not have been taken into account. They contended that the Court of Appeal's assessment of the similarity of the 668 Mark and the DP sign had been conducted from only one viewpoint, namely, looking down from head height at the feet of someone wearing the footwear. They submitted that such an assessment of similarity could not be legitimate unless that was the only viewpoint or angle from which the average consumer would ever encounter the DP sign.
(ii) Confusion Issue: Dream Pairs submitted that the essential purposes of trade mark protection require the likelihood of confusion on the part of the public to be assessed as at the point of a subsequent sale or in a subsequent transactional context.
The Appeal
(i) Similarity Issue: When assessing whether the DP sign and the 668 Mark were similar and, if so, the degree of similarity, Dream Pairs argued that extraneous circumstances, such as how the goods are subsequently perceived, should not have been taken into account. They contended that the Court of Appeal's assessment of the similarity of the 668 Mark and the DP sign had been conducted from only one viewpoint, namely, looking down from head height at the feet of someone wearing the footwear. They submitted that such an assessment of similarity could not be legitimate unless that was the only viewpoint or angle from which the average consumer would ever encounter the DP sign.
(ii) Confusion Issue: Dream Pairs submitted that the essential purposes of trade mark protection require the likelihood of confusion on the part of the public to be assessed as at the point of a subsequent sale or in a subsequent transactional context.
The Appeal
The appeal came before Lords Hodge, Briggs, Hamblen and Stephens and Lady Rose on 17 and 18 Mar 2025. Judgment was delivered by Lord Briggs and Lord Stephen. Lord Stephens read the above-mentioned summary of their lordships' judgment on 25 June 2025.
Structure of the Judgment
The judgment consisted of 116 paragraphs divided into 6 sections.
Section 1 (para [1] to para [11]) introduced the judgment. It identified Iconix's registered marks and the DP sign. It traced the history of the litigation and indicated the grounds of appeal. At para [11], Lord Briggs and Lord Stephens said:
"In the analysis that follows we will first address the two issues of law raised by Dream Pairs' submissions, as outlined above, before considering whether the judge's decision was vitiated by irrationality, error of law or principle, sufficiently to entitle the Court of Appeal to re-make the decision. As will appear neither of the two issues of law is determinative of the outcome of this appeal. We consider them nonetheless since it is because of them that permission for this appeal was granted."
"In the analysis that follows we will first address the two issues of law raised by Dream Pairs' submissions, as outlined above, before considering whether the judge's decision was vitiated by irrationality, error of law or principle, sufficiently to entitle the Court of Appeal to re-make the decision. As will appear neither of the two issues of law is determinative of the outcome of this appeal. We consider them nonetheless since it is because of them that permission for this appeal was granted."
Section 2 (para [12] to para [41]) was entitled "Legal Framework". It covered the applicable legislation, the functions of a trade mark, the rights of a registered proprietor and the provisions of the Trade Mark Act 1994 that relate to infringement under s.10 (2) (b). In particular, it considered the role of the "average consumer", the test of similarity between an allegedly infringing sign and the registered mark and the likelihood of confusion.
Section 3 (para [42] to para [66]) addressed the similarity issue. Their lordships considered and rejected Dream Pair's contentions in the light of Mr Justice Miles's judgment. The Justices also analysed and distinguished the Court of Justice's judgments in Case C-328/18 P European Union Intellectual Property Office v Equivalenza Manufactory SL EU: C:2020:156, [2020] EUECJ C-328/18P, ECLI:EU: C:2020:156 and Case C-334/22 Audi AG v GQ [2024] WLR(D) 163, [2024] Bus LR 1056, [2024] ETMR 16, EU: C:2024:76, [2024] EUECJ C-334/22, ECLI:EU: C:2024:76.
Section 4 (para [67] to para [92]) dealt with the confusion issue. Dream Pairs argued that the Court of Appeal had erred in holding that it was possible for the use of a sign to give rise to a likelihood of confusion after sale, even where there was no likelihood of confusion at the point of sale. Lord Briggs and Lord Stephens rejected that argument for the reasons set out in paras [87] to [92] of their judgment.
Section 5 (para [93] to para [115]) considered whether the Court of Appeal was entitled to remake the trial judge's decision. After discussing the circumstances in which an appeal court can intervene, the Justices reviewed Mr Justice Miles's judgment. They found no errors in the trial judge's judgment that would have justified the Court of Appeal in substituting its own assessment of the similarity of the registered marks and DP Sign and the likelihood of confusion
Section 6 (para [116]) concluded that the Supreme Court would allow this appeal even though it had rejected the points of law raised by Dream Pairs. This was not a case in which such matters as irrationality, error of principle or law would have justified the Court of Appeal in substituting its own different view of the multifactorial question facing the trial judge from the one that he had reached.
Legislation
Lord Briggs and Lord Stephens noted that Iconix's trade marks were registered under the Trade Marks Act 1994. That statute had been enacted to implement First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks ("Directive 89/104"), European Parliament and Council Directive 2008/95/EC of 22 October 2008 and European Parliament and Council Directive (EU) 2015/2436 of 16 December 2015 ("Directive 2015/2436"). Also relevant are Council Regulation (EC) No 40/94 ("Regulation 40/94") and Parliament and Council Regulation (EU) 2017/1001 of 14 June 2017 on the European Union trade mark ("Regulation 2017/1001").
The Case Law
The Case Law
While the UK was in the EU, that legislation was interpreted and applied in accordance with the case law of the Court of Justice of the European Union when dealing with requests for preliminary rulings from national courts and the General Court when deciding actions for the annulment of decisions of the European Union Intellectual Property Office. Since Brexit, that case law has been of persuasive authority only.
Functions of A Trade Mark
The Justices referred to para [58] of the Court of Justice's judgment in Case C-487/07 L'Oréal SA v Bellure NV [2010] Bus LR 303, [2009] EUECJ C-487/07, [2010] RPC 1, [2009] ETMR 55, [2009] ECR I-5185, [2009] EUECJ C-487/7 which stated that the functions of a trade mark included
"not only the essential function ........... which is to guarantee to consumers the origin of the goods or services, but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising."
They also referred to para [54] of Lord Kitchin's judgment in SkyKick UK Ltd v Sky Ltd [2024] UKSC 36; [2025] Bus LR 251 which outlined the essential function of a registered trade mark as being:
"... in particular, to guarantee the identity of the origin of the goods or services in relation to which it is used. In more colloquial terms, it is a badge of origin and its purpose is to permit the consumer, without any possibility of confusion, to distinguish the goods or services of one undertaking from those of another."
"... in particular, to guarantee the identity of the origin of the goods or services in relation to which it is used. In more colloquial terms, it is a badge of origin and its purpose is to permit the consumer, without any possibility of confusion, to distinguish the goods or services of one undertaking from those of another."
The Rights of a Trade Mark Owner
Lord Briggs and Lord Stephens noted that the rights of a registered proprietor are defined in s.9 (1) of the Trade Marks Act 1994 by reference to acts that constitute infringement under s.10 (1), (2) and (3). S.9 transposes into English and Welsh, Scottish and Northern Irish law art 10 (1) of Directive 2015/2436 and the rights granted by art 16 (1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights.
The Alleged Infringement
It will be recalled that Iconix sued Dream Pairs under s.10 (2) and (3) of the Trade Marks Act 1994. The parties agreed that the outcome of the claim under s.10 (3) would follow the outcome of the proceedings under s.10 (2). It was common ground that if there was a likelihood of confusion, there would also be a risk of detriment to distinctive character under s.10 (3). It followed that the appeal in relation to s.10 (3) would stand or fall with the s.10 (2) appeal. The Justices also noted that s.10 (2) (b) implements art 10 (2) (b) of Directive 2015/2436.
The Conditions for a Successful Action under s.10 (2) (b)
Referring to para [285] of Sky Kick, their lordships noted at [23] of their judgment that the following conditions must be satisfied for a successful action under s.10 (2) (b):
Their lordships observed at para [26] that the dispute in this case related to conditions (v) and (vi).
"[16] First, the average consumer is both a legal construct and a normative benchmark. They are a legal construct in that consumers who are ill-informed or careless and consumers with specialised knowledge or who are excessively careful are excluded from consideration. They are a normative benchmark in that they provide a standard which enables the courts to strike a balance between the various competing interests involved, including the interests of trade mark owners, their competitors and consumers.
"Use" for the purpose of these conditions was defined in s.10 (4). Lord Briggs and Lord Stephens considered it appropriate to note that the non-exhaustive list in s.10 (4) included numerous acts that were remote in time from the point when a purchase of goods or services or a transaction in relation to goods or services is concluded.
At para [27] Lord Briggs and Lord Stephems said that the "sign" referred to in these conditions should be identified as a preliminary step before assessing the similarity of the sign to the trade mark. Similarly, the goods and services in relation to which the sign is used must be determined.
Average Consumer
Lord Justice Arnold had observed at para [15] of his judgment in Lidl Great Britain Ltd v Tesco Stores Ltd [2024] EWCA Civ 262; [2025] 1 All ER 311 that it was "firmly established that many issues in trade mark law, including the issues arising on claims for infringement, must be assessed from the perspective of the 'average consumer' of the relevant goods and/or services, who is 'deemed to be reasonably well informed and reasonably observant and circumspect." The learned Lord Justice referred to Case C-342/97 Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV [1999] ECR I-3819 at [26] and many subsequent authorities. The Justices recalled para [34] of Lord Justice Floyd's judgment in London Taxi Corpn Ltd v Frazer-Nash Research Ltd [2017] EWCA Civ 1729; [2018] FSR 7 that the average consumer includes "any class of consumer to whom the guarantee of origin is directed and who would be likely to rely on it, for example in making a decision to buy or use the goods."
At para [30] of their judgment, Lord Briggs and Lord Stephens cited the following passage of the judgment of Lord Justice Arnold in Lidl Great Britain Ltd v Tesco Stores Ltd :
"[16] First, the average consumer is both a legal construct and a normative benchmark. They are a legal construct in that consumers who are ill-informed or careless and consumers with specialised knowledge or who are excessively careful are excluded from consideration. They are a normative benchmark in that they provide a standard which enables the courts to strike a balance between the various competing interests involved, including the interests of trade mark owners, their competitors and consumers.
[17] Secondly, the average consumer is neither a single hypothetical person nor some form of mathematical average, nor does assessment from the perspective of the average consumer involve a statistical test. They represent consumers who have a spectrum of attributes such as age, gender, ethnicity and social group. For this reason the European case law frequently refers to 'the relevant public' and 'average consumers' rather than, or interchangeably with, 'the average consumer': see, for example, Intel Corpn Inc v CPM United Kingdom Ltd (Case C-252/07) [2008] ECR I-8823; [2009] Bus LR 1079, para 34. It follows that assessment from the perspective of the average consumer does not involve the imposition of a single meaning rule akin to that applied in defamation law (but not malicious falsehood). Thus, when considering the issue of likelihood of confusion, a conclusion of infringement is not precluded by a finding that many consumers of whom the average consumer is representative would not be confused. To the contrary, if, having regard to the perceptions and expectations of the average consumer, the court considers that a significant proportion of the relevant public is likely to be confused, then a finding of infringement may properly be made.
[18] Thirdly, assessment from the perspective of the average consumer is designed to facilitate adjudication of trade mark disputes by providing an objective criterion, by promoting consistency of assessment and by enabling courts and tribunals to determine such issues so far as possible without the need for evidence. ....
[19] Fourthly, the average consumer's level of attention varies according to the category of goods or services in question.
[20]. Fifthly, the average consumer rarely has the opportunity to make direct comparisons between trade marks (or between trade marks and signs) and must instead rely upon the imperfect picture of the trade mark they have kept in their mind."
[18] Thirdly, assessment from the perspective of the average consumer is designed to facilitate adjudication of trade mark disputes by providing an objective criterion, by promoting consistency of assessment and by enabling courts and tribunals to determine such issues so far as possible without the need for evidence. ....
[19] Fourthly, the average consumer's level of attention varies according to the category of goods or services in question.
[20]. Fifthly, the average consumer rarely has the opportunity to make direct comparisons between trade marks (or between trade marks and signs) and must instead rely upon the imperfect picture of the trade mark they have kept in their mind."
Test of Similarity of an Allegedly Infringing Sign to a Registered Mark
The learned Supreme Court Justices said at para [31] of their judgment that for the purposes of the appeal it was sufficient to state that the test for the similarity of the sign to the trade mark was set out by the Court of Justice of the European Union at para [23] of their judgment in Case C-251/95 Sabel BV v Puma AG [1998] CEC 315, [1998] RPC 199, [1997] EUECJ C-251/95, [1998] ETMR 1, [1998] 1 CMLR 445, [1997] ECR I-6191:
"That global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components."
"That global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components."
Their lordships explained:
Likelihood of Confusion
Referring to para [23] of Sabel v Puma, the Justices noted at [32] that if the threshold of similarity is passed, then an assessment of the degree of similarity becomes relevant to the subsequent question as to whether 'there exists a likelihood of confusion on the part of the public." Their lordships observed that the Court of Justice had described the likelihood of confusion as "... the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings ..." in para [29] of its judgment in Case C-39/97 Canon Kabushiki Kaisha v Metro Goldwyn Mayer Inc. [1999] 1 CMLR 77, [1998] All ER (EC) 934, [1998] ECR I-2655, [1999] FSR 332, [1998] EUECJ C-39/97, [1998] ECR I-5507, ECLI:EU: C:1998:442, [1999] RPC 117, [1999] ETMR 1, EU: C:1998:442, [1998] CEC 920. They also stated that the Court of Justice had given guidsnce for determining the likelihood of confusion in successive judgments which Lord Justice Arnold had summarized in Match Group LLC and others v Muzmatch Ltd and another [2023] EWCA Civ 454, [2023] Bus LR 1097, [2023] WLR(D) 199, [2023] FSR 18, [2023] 4 All ER 190 at para [27]:
"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion."
Although that guidance had been developed for registration disputes, it applied equally to disputes over infringement, though it was necessary to consider the actual use of the sign complained of in the context in which the sign had been used when considering infringement.
The Context in which the Sign had been Used
Lord Briggs and Lord Stephens approved para [87] of Lord Justice Kitchin's judgment in Specsavers International Healthcare Ltd and others v Asda Stores Ltd [2012] EWCA Civ 24, [2012] ETMR 17, [2012] FSR 19:
Their lordships noted at para [40] of their judgment that there was no dispute that in the post-sale context, a realistic and representative way in which the average consumer would encounter the sign was by seeing it from head height on footwear worn by another person. There was therefore no challenge to that part of the Court of Appeal's judgment which stated that "the key aspect of the post-sale context [is] that the viewer would see the Sign as affixed to footwear looking down from head height at the feet of another person wearing the footwear". That post-sale context required consideration as to the impression which the sign would make on the average consumer when viewed in that way. Citing para [67] of the Court of Justice's judgment in Case C-533/06 O2 Holdings Ltd v Hutchison 3G UK Ltd [2008] EUECJ C-533/6, [2008] EUECJ C-533/06, [2008] ETMR 55, [2008] RPC 33, [2008] 3 CMLR 14, [2009] Bus LR 339, [2008] ECR I-4231, (2009) 32(1) IPD 32001, [2008] CEC 899. the Supreme Court Justices said that the context in infringement proceedings under s.10 (2) (b) was "limited to the circumstances characterising [the allegedly infringing] use, without there being any need to investigate whether another use of the same sign in different circumstances would also be likely to give rise to a likelihood of confusion".
Similarity Issue
The Justices considered Dream Pairs's criticism of the Court of Appeal's judgment to have been misplaced. The trial judge had carried out a side-by-side examination of the mark and sign and found that there was only a low degree of similarity. That part of his judgment had never been challenged. Having found some similarity, his lordship carried out a detailed assessment of the degree of similarity before considering the likelihood of confusion. Their lordships discussed European Union Intellectual Property Office v Equivalenza Manufactory SL and Audi AG v GQ because Dream Pairs had relied on those authorities to support their argument.
Lord Briggs and Lord Stephens distinguished the appeal before them from Equivalenza on the ground that the issue in that case was whether it was impermissible for the General Court to 'rule out any similarity between' the signs at issue by reference to the circumstances in which the goods in question were marketed. In Iconix, the issue was whether the post-sale circumstances could be considered at the stage of assessing similarity to establish, rather than to rule out, similarity between sign and mark.
Lord Briggs and Lord Stephens distinguished the appeal before them from Equivalenza on the ground that the issue in that case was whether it was impermissible for the General Court to 'rule out any similarity between' the signs at issue by reference to the circumstances in which the goods in question were marketed. In Iconix, the issue was whether the post-sale circumstances could be considered at the stage of assessing similarity to establish, rather than to rule out, similarity between sign and mark.
In Audi, the Court of Justice of the European Union stated at para [47] of its judgment:
Dream Pairs relied on that paragraph to argue that the reasoning in Equivalenza was equally applicable in the context of infringement proceedings. However, para [47] was about assessing the likelihood of confusion rather than assessing similarity. Although the Justices agreed that post-sale circumstances could not be used to rule out intrinsic similarities between sign and mark by virtue of Equivalenza and that this applies to infringement proceedings, they considered that Audi was not authority for the proposition that at the stage of assessing similarity, post-sale circumstances should not be considered to establish similarity between sign and mark.
Their lordships considered that realistic and representative post-sale circumstances can be taken into account for the purpose of establishing whether the signs at issue are similar and, if so, the degree of similarity for the following reasons:
"[61] First, the CJEU in Equivalenza is authority for the proposition that at the stage of assessing similarity it is impermissible to consider post-sale circumstances in order to rule out intrinsic similarities between the signs at issue. It is not authority for the proposition that at the stage of assessing similarity post-sale circumstances cannot be considered to establish similarities between the signs at issue.
[62] Secondly, if the appellants' submissions are correct then a global assessment of the likelihood of confusion would be ruled out in circumstances where there was no intrinsic similarity between the signs at issue even if, in a realistic and representative post-sale environment, there was similarity. To rule out a global assessment in such circumstances would run counter to the requirement for a global assessment where there is a faint degree of similarity.
[63] Thirdly, if the post-sale circumstances are restricted to realistic and representative circumstances, then we do not consider that any absurdity will result. Provided the viewpoints in such circumstances are realistic and representative the signs at issue would either be classified as similar or dissimilar.
[64] Fourthly, the approach that at the stage of assessing similarity a court, in order to establish similarity, can take into account how the sign at issue is perceived in a realistic and representative post-sale environment, is consistent with that part of para 71 of the judgment in Equivalenza in which the CJEU stated that the 'comparison must be based on the overall impression made by those signs on the relevant public.'
[65] Fifth, marketing conditions counteracting any similarity will be taken into account in the global assessment of the likelihood of confusion."
"[61] First, the CJEU in Equivalenza is authority for the proposition that at the stage of assessing similarity it is impermissible to consider post-sale circumstances in order to rule out intrinsic similarities between the signs at issue. It is not authority for the proposition that at the stage of assessing similarity post-sale circumstances cannot be considered to establish similarities between the signs at issue.
[62] Secondly, if the appellants' submissions are correct then a global assessment of the likelihood of confusion would be ruled out in circumstances where there was no intrinsic similarity between the signs at issue even if, in a realistic and representative post-sale environment, there was similarity. To rule out a global assessment in such circumstances would run counter to the requirement for a global assessment where there is a faint degree of similarity.
[63] Thirdly, if the post-sale circumstances are restricted to realistic and representative circumstances, then we do not consider that any absurdity will result. Provided the viewpoints in such circumstances are realistic and representative the signs at issue would either be classified as similar or dissimilar.
[64] Fourthly, the approach that at the stage of assessing similarity a court, in order to establish similarity, can take into account how the sign at issue is perceived in a realistic and representative post-sale environment, is consistent with that part of para 71 of the judgment in Equivalenza in which the CJEU stated that the 'comparison must be based on the overall impression made by those signs on the relevant public.'
[65] Fifth, marketing conditions counteracting any similarity will be taken into account in the global assessment of the likelihood of confusion."
Confusion Issue
Dream Pairs alleged that the Court of Appeal erred in holding 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" (Emphasis added) at para [12] of Lord Justice Arnold's judgment in Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and another [2024] EWCA Civ 29, [2024] RPC 10. In advancing that point, Dream Pairs did not submit that post-sale confusion was irrelevant. It argued that there can be no actionable infringement absent a finding that the post-sale confusion affected or jeopardized 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. For post-sale confusion to be actionable, it had to 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.
To succeed, Dream Pairs had to distinguish Case C-206/01 Arsenal Football Club plc v Reed ECLI:EU: C:2002:651, EU: C:2002:651, [2003] 3 WLR 450, [2002] ECR I-10273, [2003] CEC 3, [2003] Ch 454, [2002] EUECJ C-206/1, [2002] EUECJ C-206/01, Case C–245/02 Anheuser-Busch Inc v Budejovicky´ Budvar, Národní Podnik [2004] ECR I-10989, [2005] ETMR 27, [2004] EUECJ C-245/2, [2004] EUECJ C-245/02, Case T-185/02 Ruiz-Picasso v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2004] ECR II-1739, [2005] ETMR 22, [2004] EUECJ T-185/02, [2004] EUECJ T-185/2 at first instance and Case C-361/04 P Ruiz-Picasso v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2006] ECR I-643, [2006] ETMR 29, [2006] EUECJ C-361/4, [2006] EUECJ C-361/04 from their appeal.
Lord Briggs and Lord Stephens agreed with para [12] of Lord Justice Arnold's judgment as a statement of the law. They rejected Dream Pairs' contention that only post-sale confusion affecting or jeopardizing 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 infringement. They also rejected the submission 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 Justices arrived at these conclusions for the following reasons:
"[87] First, none of the CJEU authorities support the proposition that actionable infringement should be limited to post-sale confusion which affects or jeopardises 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. Rather, the CJEU authorities support the propositions that: (i) a trade mark continues to identify origin even after sale so that, in appropriate circumstances, it can give rise to infringement on the basis of a likelihood of post-sale confusion; (ii) perceptions of a sign post-sale leading to confusion as to origin are not limited to perceptions at the point of a subsequent sale or in a subsequent transactional context; and (iii) that "it can be relevant to take the post-sale context into account when considering trade mark issues".
[88] Secondly, we can discern no reason in principle for imposing a limitation 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.
[89] Thirdly, in Canon Kabushiki Kaisha v Metro Goldwyn Mayer Inc (Case C-39/97) [1999] ETMR 1; [1998] All ER (EC) 934, para 29, the CJEU explained what amounts to a likelihood of confusion not by reference to 'the purchasing public' but by reference to 'the public'. The CJEU stated that what constituted a likelihood of confusion was:
'... the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings ....' (Emphasis added.)
[90] Fourthly, we agree with Iconix's submission, set out at para 25 above, that the inclusion in section 10 (4) of the Act of the uses of a sign that are remote from the point when a purchase of goods or services or a transaction in relation to goods or services is concluded, is irreconcilable with 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, in appropriate circumstances, to an actionable infringement. We illustrate this point by reference to the act of advertising. We consider that it is simply unsustainable to contend that the act of advertising should not be actionable unless there was confusion at the point of purchase or in a transactional context. Furthermore, there is no reference in section 10 (4) to the act of sale itself and this omission further undermines 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, in appropriate circumstances, to an actionable infringement.
[91] Fifthly, there is no mention of the point of purchase or reference to a transactional context in TRIPs, or in the Directives.
[92] Sixthly, the exclusive right under section 9 of the Act is conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor, that is, to ensure that the trade mark can fulfil its functions. Damage to the origin function of a trade mark is complete if an average consumer is confused about the origin of goods. While other damage may well arise from that origin confusion (for example, direct damage to the proprietor's economic interests through lost sales) no such further damage is required."
Whether the Court of Appeal was entitled to remake the Decision
The Justices acknowledged the possibility of different judges arriving at different conclusions when carrying out the same multifactorial assessment. Although an appeal court trumps the court below, the law has imposed constraints on appeal courts' intervention for the reasons given by Lord Justice Lewison at para [114] of his judgment in Fage UK Ltd v Chobani UK Ltd [2014] ETMR 26, [2014] EWCA Civ 5, [2014] CTLC 49, [2014] FSR 29, [2014] FSR 2:
(ii) Duplication of the trial judge's role on appeal is a disproportionate use of the limited resources of an appellate court.
(iii) In making his decisions, the trial judge will have regard to the whole of the sea of evidence presented to him, whereas an appellate court will only be island hopping.
On the other hand, there are circumstances where an appeal court's intervention is justified. These were discussed at paras [49] and [50] of the Supreme Court's judgment in Lifestyle Equities CV v Amazon UK Services Ltd [2024] 2 All ER (Comm) 663, [2024] 3 All ER 93, [2024] UKSC 8, [2024] FSR 21, [2024] Bus LR 532, [2024] WLR(D) 105:
"[49] That does not, however, mean the appeal court is powerless to intervene where the judge has fallen into error in arriving at an evaluative decision such as whether an activity was or was not targeted at a particular territory. It may be possible to establish that the judge was plainly wrong or that there has been a significant error of principle, but the circumstances in which an effective challenge may be mounted to an evaluative decision are not limited to such cases. Many of the important authorities in this area were reviewed by the Court of Appeal in In re Sprintroom Ltd [2019] 2 BCLC 617, paras 72–76. There, in a judgment to which all members of the court (McCombe, Leggatt and Rose LJJ) contributed, the court concluded, at para 76, in terms with which we agree, that on a challenge to an evaluative decision of a first instance judge, the appeal court does not carry out the balancing exercise afresh but must ask whether the decision of the judge was wrong by reason of an identifiable flaw in the judge's treatment of the question to be decided, such as a gap in logic, a lack of consistency, or a failure to take into account some material factor, which undermines the cogency of the conclusion.
[50] On the other hand, it is equally clear that, for the decision to be 'wrong' under CPR r 52.21(3), it is not enough to show, without more, that the appellate court might have arrived at a different evaluation."
"[49] That does not, however, mean the appeal court is powerless to intervene where the judge has fallen into error in arriving at an evaluative decision such as whether an activity was or was not targeted at a particular territory. It may be possible to establish that the judge was plainly wrong or that there has been a significant error of principle, but the circumstances in which an effective challenge may be mounted to an evaluative decision are not limited to such cases. Many of the important authorities in this area were reviewed by the Court of Appeal in In re Sprintroom Ltd [2019] 2 BCLC 617, paras 72–76. There, in a judgment to which all members of the court (McCombe, Leggatt and Rose LJJ) contributed, the court concluded, at para 76, in terms with which we agree, that on a challenge to an evaluative decision of a first instance judge, the appeal court does not carry out the balancing exercise afresh but must ask whether the decision of the judge was wrong by reason of an identifiable flaw in the judge's treatment of the question to be decided, such as a gap in logic, a lack of consistency, or a failure to take into account some material factor, which undermines the cogency of the conclusion.
[50] On the other hand, it is equally clear that, for the decision to be 'wrong' under CPR r 52.21(3), it is not enough to show, without more, that the appellate court might have arrived at a different evaluation."
The Justices analysed Mr Justice Miles's reasoning and concluded at paras [110] and [111]:
"[110] In our view this criticism, which amounts to saying that no reasonable judge could have reached the same conclusion, is misplaced. The judge had, when dealing with similarity, dealt carefully with, and rejected, the submissions about viewing the DP Sign from different angles, and the potential for the perspective of the DP Sign thereby to be foreshortened (in the vertical plane, but elongated in the horizontal plane): see his paras 138-9. The Court of Appeal's assessment also ignores the fact (apparent from the photographs of boots with the DP Sign affixed also appearing on the Amazon webpages) that the DP Sign appears affixed not only to the side but also to the top of the boot, on the tongue or similar surface. Thus, as the angle of the viewer to the side DP Sign becomes more acute, so their angle to the top DP Sign becomes more square-on.
[111] We would readily acknowledge that reasonable judicial views might differ on this issue about similarity when viewed from an angle, but our task is not to form our own view, unless both the judge and the Court of Appeal made what may loosely be called appealable errors. It is enough for us to say that, whether we would or would not have agreed with the judge's assessment, his was by no means irrational."
"[110] In our view this criticism, which amounts to saying that no reasonable judge could have reached the same conclusion, is misplaced. The judge had, when dealing with similarity, dealt carefully with, and rejected, the submissions about viewing the DP Sign from different angles, and the potential for the perspective of the DP Sign thereby to be foreshortened (in the vertical plane, but elongated in the horizontal plane): see his paras 138-9. The Court of Appeal's assessment also ignores the fact (apparent from the photographs of boots with the DP Sign affixed also appearing on the Amazon webpages) that the DP Sign appears affixed not only to the side but also to the top of the boot, on the tongue or similar surface. Thus, as the angle of the viewer to the side DP Sign becomes more acute, so their angle to the top DP Sign becomes more square-on.
[111] We would readily acknowledge that reasonable judicial views might differ on this issue about similarity when viewed from an angle, but our task is not to form our own view, unless both the judge and the Court of Appeal made what may loosely be called appealable errors. It is enough for us to say that, whether we would or would not have agreed with the judge's assessment, his was by no means irrational."
Their lordships considered the trap into which the trial judge was alleged to have fallen and concluded at [114]:
"The reason why the Court of Appeal appears to have concluded that the judge fell into that supposed trap was, we think, the same as their reason for finding irrationality, namely their own firm contrary view about similarity: (see para 34). With respect, they appear to have fallen into the trap of thinking that the only reasons why the judge could have reached an equally firm view differing from their own was that he must have made the errors of principle of which he was accused by Iconix."
"The reason why the Court of Appeal appears to have concluded that the judge fell into that supposed trap was, we think, the same as their reason for finding irrationality, namely their own firm contrary view about similarity: (see para 34). With respect, they appear to have fallen into the trap of thinking that the only reasons why the judge could have reached an equally firm view differing from their own was that he must have made the errors of principle of which he was accused by Iconix."
Comment
Before the appeal was heard, it was believed that the most contentious issue would be the weight that the Court of Appeal had given to the use of the sign on the football field. The Supreme Court endorsed the Court of Appeal's reasoning on that issue. The appeal succeeded not on the grounds for which permission to appeal had been granted, but on whether the Court of Appeal had been right to substitute its own multifactorial assessment of similarity and likelihood of confusion for that of the trial judge.
Anyone wishing to discuss this judgment may call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact form at any time.
Comments