From pitch to precedent: When football boots confuse the law

In a significant decision (full judgment linked here), the Supreme Court has reaffirmed the relevance of post-sale confusion in assessing infringement under section 10(2)(b) of the Trade Marks Act 1994 and clarified the boundaries of appellate intervention in trade mark disputes.

Background

The dispute arose between Iconix, owner of the UMBRO diamond mark (below), and Dream Pairs, which had marketed football boots in the UK bearing a logo (the DP Sign) that Iconix claimed was confusingly similar to its registered UMBRO trade marks.

UMBRO diamond mark	Dream Pairs sign

At first instance, the High Court dismissed Iconix’s claim, finding only a “very low degree of similarity” between the marks and no likelihood of confusion. The trial judge emphasised the visual differences and concluded that consumers were unlikely to associate the DP Sign with UMBRO. The Court of Appeal reversed that decision. It held that the trial judge’s assessment of similarity was irrational, particularly when the DP Sign was viewed from angles other than square on. The appellate court conducted its own evaluation and found a “moderately high level of similarity” in the post-sale context, such as when a football boot is seen on someone else’s foot, and concluded that a likelihood of confusion existed.

Supreme Court Judgment

The Supreme Court unanimously allowed Dream Pairs’ appeal, reversing the decision of the Court of Appeal, and delivered two important clarifications:

• post-sale confusion as a relevant factor

Post-sale confusion is where a consumer might be misled after the point of purchase, for example in observing a product in use. In this instance, that might be a consumer seeing football boots “in the street, on the football pitch or in the changing room”. 

The Supreme Court confirmed that post-sale confusion can be a relevant factor in the global assessment of likelihood of confusion. In particular, it held that when assessing whether signs are similar, it is permissible to consider realistic and representative post-sale circumstances (for example, the viewing angles in a post-sale environment). This is consistent with established EU and UK case law, which recognises that trade mark infringement is not to confined to the moment of sale. However, the Supreme Court emphasised that such confusion must still be assessed from the perspective of the average consumer and must be supported by evidence. 

• limits of appellate review on findings of fact

The Supreme Court held that the Court of Appeal had replaced the trial judge’s assessment of similarity and confusion with its own. It reiterated that appellate courts should not interfere with findings unless there is a clear legal error or the decision is one that no reasonable judge could have reached. The trial judge’s conclusion on the degree of similarity was deemed to be based on a careful evaluation of the evidence and was not irrational. Thus, the Supreme Court stated that the Court of Appeal should not have re-evaluated the factual findings merely because it would have reached a different conclusion. 

The Supreme Court’s decision is a significant win for brand owners, affirming that trade mark protection extends beyond the point of sale. It also clarified that courts can consider how a mark is realistically viewed in use, such as on worn footwear, when assessing similarity. This broadens the scope of trade mark enforcement and strengthens brand owners’ ability to protect their marks in real-world contexts. However, the Court also reinforced that appellate courts must respect trial judges’ evaluative findings unless there is a clear legal or logical error, emphasising the importance of building a strong case at first instance.