One Step Too Far? – A Singapore Perspective on the UK Supreme Court’s decision in Iconix v Dream Pairs

The UK Supreme Court (UKSC) has just handed down its highly anticipated judgment in the case of Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc [2025] UKSC 25, affirming the relevance of post-sale circumstances when assessing marks-similarity and the likelihood of consumer confusion in a trade mark infringement context. In this article, we briefly examine the UKSC’s judgment and contrast the Singapore approach.

What happened in Iconix v Dream Pairs?

Iconix, the owner of the sports brand “UMBRO” and the registered proprietor of the UMBRO logo 

covering footwear, sued Dream Pairs for trade mark infringement for using the sign 

(the “DP Logo”) on its footwear. 

Iconix’s claims were dismissed at first instance on the basis inter alia that there was no likelihood of confusion, whether pre-sale, at the point of sale, or post-sale. On appeal by Iconix, the English Court of Appeal overturned the trial judge’s decision, finding that the marks were similar and there was a likelihood of confusion if the DP Logo were to be viewed in the post-sale context - from head height on footwear being worn by another person, where the DP Logo would be foreshortened and therefore appear more similar to the UMBRO logo.

On appeal by Dream Pairs, the UKSC agreed with Iconix’s arguments that to establish marks-similarity, it is permissible to consider how the competing signs would be perceived in “realistic and representative post-sale circumstances”; and that post-sale confusion by itself is sufficient to establish infringement. Nevertheless, Dream Pairs’ appeal was allowed on a procedural point (i.e., that the Court of Appeal should not have substituted its decision for the trial judge’s).

The UKSC’s decision is good news for owners of UK trade marks, as its affirmation of the need to consider post-sale circumstances as part of the marks-similarity and likelihood of confusion analyses could make it easier to establish infringement. (For a fuller discussion of the UKSC’s decision and its ramifications, see here.)  

What if the case had been decided in Singapore? 

In Iconix v Dream Pairs, the UKSC dealt with two key issues: 

• Should the manner in which marks would be perceived in the post-sale context be taken into account in assessing marks-similarity?
• Is post-sale confusion by itself sufficient to establish infringement, even if such confusion does not extend to the point of a subsequent sale?

Whilst the UKSC had answered both questions in the affirmative, the Singapore courts are likely to answer them in the negative.

On marks-similarity, the Singapore Court of Appeal (SCA) has held in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc. [2013] SGCA 65 (“Staywell”) that the assessment of marks-similarity under the Singapore Trade Marks Act 1998 is mark-for-mark without consideration of any external matter. This includes any consideration of the significance of each aspect of similarity having regard to the goods or services in question (e.g., aural similarity for beverages normally ordered orally, or visual similarity for clothing). It follows that the context in which marks would likely be perceived in the post-sale context is also irrelevant.

As for the likelihood of confusion, it is also unequivocal in Staywell that only point of sale confusion is relevant. In declining to adopt the doctrine of initial interest confusion, the SCA observed that if the confusion does not persist to the point of purchase, no relief will be granted because the purpose of the trade mark as a badge of origin has not been undermined. It follows that post-sale confusion that does not persist to the point of a subsequent purchase by a person who encountered the defendant’s mark in the post-sale context would also be irrelevant.

Consequently, if the case had been decided in Singapore, Dream Pairs would have prevailed based on the existing legal principles, and on the back of the trial judge’s undisturbed findings that there was only a “faint similarity” between the marks if they were compared head-on and that there was no likelihood of confusion at the point of sale.

Passing-off to the rescue? – Not quite

Could brand owners get around these obstacles under Singapore trade mark laws by bringing a claim for passing-off (a tort premised on misrepresentation) instead? 

The test for misrepresentation in passing off is akin to that for a likelihood of consumer confusion in the trade mark infringement context, except that all the relevant circumstances - including how the marks are likely to be perceived by consumers in the course of trade - are relevant to the assessment of misrepresentation. For instance, in Han’s (F & B) Pte Ltd v Gusttimo World Pte Ltd [2015] SGHC 39, the Singapore High Court commented that, for passing off, the court is entitled to take “a broader view of the context within which the respective marks are employed in ascertaining whether a likelihood of confusion exists”.  

Even so, post-sale confusion will be disregarded even in a passing-off claim. In TMRG Pte Ltd and another v Caerus Holding Pte Ltd and another [2022] SGHC(A) 4, the Appellate Division of the Singapore High Court held that initial interest confusion is insufficient to sustain a passing-off claim, and that a likelihood of confusion at the point of sale is required. This is the same approach laid out in Staywell for trade mark infringement claims. It follows that post-sale confusion, to the extent it does not persist to the point of a subsequent sale, is similarly irrelevant for passing off claims. 

What if there is no likelihood of confusion / misrepresentation?

What can brand owners do if the likelihood of confusion or misrepresentation at the point of sale cannot be established? The following alternative causes of action which do not require proof of a likelihood of confusion or misrepresentation can be considered, although, perhaps unsurprisingly, they come with their own unique challenges. 

• Dilution or taking unfair advantage of well-known trade mark: If the trade mark is well known to the public at large in Singapore, the brand owner is entitled to restrain the use of a sign that is liable to unfairly dilute (i.e., blur or tarnish) or takes unfair advantage of the distinctive character of the trade mark. A key challenge will be to establish that the trade mark is well known to the public at large in Singapore, which is a high bar as it requires proof of the trade mark’s renown in most sectors of the Singapore public. Further, whilst a likelihood of confusion need not be shown, a lack of marks-similarity could pose an issue. In Iconix v Dream Pairs, at first instance, Iconix’s alternative claim on a similar ground was dismissed inter alia on the basis that the low degree of marks-similarity weighed against a finding of detriment or the taking of unfair advantage. 
• Copyright infringement: In the case of pictorial or logo marks, a claim for copyright infringement can be considered. To establish copyright infringement, confusion or misrepresentation is immaterial; instead, the putative claimant has to show that (among other things) the defendant’s sign had copied a substantial part of the claimant’s trade mark. However, there must be sufficient original expression in the mark for it to be protected as an artistic work – which could be challenging if the logo is a simple geometric shape. The existence of a rebuttable presumption of copyright ownership under the Singapore Copyright Act 2021 is helpful to deal with any evidential difficulties on this front. 

Conclusion

On the whole, the scope of protection afforded to Singapore trade marks would seem to be narrower than that afforded to UK trade marks - particularly in view of the exclusion of post-sale confusion as an actionable basis for trade mark infringement in Singapore. 

The upside is greater market certainty for both brand owners and new market entrants alike, bearing in mind that the same trader may be both a brand owner and a new market entrant looking to launch a new brand or enter into new lines of businesses. Traders would not have to be concerned about whether the use of a sign could inadvertently infringe another trader’s rights owing to the vagaries of post-sale circumstances which they have no control over and may not be able to foresee. 

This article is produced by our Singapore office, Bird & Bird ATMD LLP. It does not constitute legal advice and is intended to provide general information only. Information in this article is accurate as of 25 July 2025.