Trade marks: Why Your Brand Could Be at Risk Even After Purchase

A recent Supreme Court ruling in the case Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc and another [2025] has established a clearer picture of the rights afforded to trade mark owners when seeking to defend their mark.

It was found that post-sale context, or how a trade mark is viewed by the public after the product has been sold and is in use, will be taken into account when assessing the similarity between two marks. In this instance, the case hinged on whether Dream Pairs’ logo was sufficiently similar to Iconix’s logo, the Umbro ‘double diamond’, when viewed from above on the side of a shoe, and whether this would cause confusion for a member of the public.

The High Court had initially dismissed Iconix’s claim, holding that there was only a passing resemblance between the two marks and that there was no likelihood of confusion. However, on appeal the Court decided that this assessment had been irrational, as it had not accounted for how the mark would be viewed in a post-sale context. As a result, the initial ruling was overturned.

Dream Pairs then opted to appeal this decision to the Supreme Court, where it was further confirmed that the way a product is viewed in a post-sale environment is to be taken into account when assessing similarity between two marks. Additionally, the Supreme Court held that where there is no likelihood of confusion at the original point of sale a trade mark can still be infringed if there is a likelihood of confusion post-sale. Effectively, breach of a trade mark can happen irrespective of where in the product’s use cycle the confusion occurs.

The effect of this ruling is that future trade mark enforcement can be based on how the mark would realistically be encountered by the public. This means that any use of a mark similar to that of a registered trade mark needs to be done with additional care, and it opens up new possibilities for defending a mark.

If you believe that your trade mark may have been infringed, or require assistance defending your trade mark, our Commercial team would be happy to assist. Please email info@franklins-sols.co.uk or call 01908 660966 / 01604 828282.