Supreme Court clarifies trade mark post-sale confusion (Iconix v Dream Pairs)
IP analysis: The Supreme Court has held that post-sale confusion can amount to an actionable infringement and is not confined to being assessed in a subsequent transactional context. It also rejected the argument that extraneous post-sale circumstances cannot be taken into account when assessing similarity between a trade mark and sign. While rejecting these arguments on errors of law, the Supreme Court nevertheless upheld the appeal, finding the Court of Appeal had been wrong in assessing the trial judge’s conclusion as irrational, and were not justified in substituting their own different views on similarity and likelihood of confusion. The decision cements the status of post-sale confusion as an actionable infringement, and delivers a reminder of the remit of appellate courts and the circumstances in which multifactorial assessments of the trial judge should be reevaluated. Written by Nick Smee, partner at Browne Jacobson LLP.