Brand New(s) #4 - Diamonds are forever (even post sale)
Supreme Court confirms post-sale confusion counts
The UK Supreme Court has handed down a crucial judgment in Iconix v Dream Pairs, significantly clarifying the relevance of post-sale confusion.
Key Points:
Post-sale confusion counts: Confusion occurring after a sale is now firmly recognised as actionable, even if no confusion exists at the point of sale.
Realistic scenarios matter: Assessments of trade mark similarity can (and now arguably should) factor in realistic post-sale viewing conditions rather than being limited strictly to side-by-side comparisons.
Marketing conditions still important: Despite the above, counteracting marketing factors must still be considered in the global assessment of likelihood of confusion.
Court of Appeal overruled: Notably, the Supreme Court overturned the Court of Appeal’s interference with the original trial judge's decision, reaffirming that appellate courts should defer to trial judges’ assessments unless there are clear legal errors.
Practical Implications:
Brand clearance: Clearing new brands could become more challenging. Brand owners will now have to explicitly evaluate potential post-sale confusion. This will be more relevant in some industries than others.
Enforceability: Brands gain enhanced power to enforce their marks, even in scenarios where confusion emerges only after the initial purchase.
Limited appeal opportunities: Successfully appealing first-instance decisions will be tougher if the original judgment applies the correct legal standards. As highlighted by the Supreme Court: “The trial is not a dress rehearsal. It is the first and last night of the show.”
Case Background:
Brands involved: Iconix (representing the UMBRO double diamond logo) and Dream Pairs (DP logo).
Legal teams:
Dream Pairs: Bird & Bird
Iconix: Brandsmiths
Outcome: The Supreme Court upheld the initial High Court decision that Dream Pairs' logo does not infringe Iconix's UMBRO double diamond logo, but answered some seriously pivotal questions about post-sale confusion along the way.