The IP Brief - November 2025

At first instance, the High Court dismissed Iconix’s claim, finding that there was “at most a very low level of similarity” between the Umbro and Dream Pairs logos and no likelihood of confusion, either at the point of sale or post-sale. This was overturned on appeal, with the Court of Appeal finding that the High Court had erred in a number of respects, including in its assessment of similarity, which the Court of Appeal found to be “rationally insupportable” - at least when the Dream Pairs logo was affixed to footwear and viewed from angles other than square-on. The Court of Appeal went on to re-evaluate the similarity of the marks and the likelihood of confusion, concluding that there was, in fact, a moderately high level of similarity between the logos and that Iconix’s claim for trade mark infringement on the grounds of likelihood of confusion had been made out (see the May 2024 edition of The IP Brief for further details).

Dream Pairs then appealed to the Supreme Court, where three core issues arose:

1. When assessing the similarity of marks, and the degree of similarity, can post-sale circumstances be taken into account? 
2. Can use of a sign give rise to a likelihood of confusion as a result of post-sale confusion even if there is no likelihood of confusion at the point of a subsequent sale^[1] or in a subsequent transactional context?
3. Was the Court of Appeal entitled to re-evaluate the question of similarity between the double diamond mark and Dream Pairs’ sign, as well as likelihood of confusion, and substitute the High Court’s decision with its own?

Taking each of these in turn, on the similarity issue the Supreme Court found that “realistic and representative” post-sale circumstances can be taken into account for the purpose of establishing similarity between the signs in issue, as well as the degree of similarity. However, post-sale circumstances cannot be used to rule out intrinsic similarities between them.

On the second question, the Supreme Court concluded that it is possible for use of a sign to give rise to a likelihood of confusion as a result of post-sale confusion even if there is no likelihood of confusion at the point of a subsequent sale or in a subsequent transactional context. In part, this decision was based on the Supreme Court’s analysis of case law and legal principle, but weight was also given to the fact that section 10(4) of the Trade Marks Act 1994 (TMA), which sets out a non-exhaustive list of acts that amount to “use” of a trade mark, includes a number of acts that are remote in time from the point of sale.

However, despite both of the above points being resolved in favour of Iconix, the Supreme Court went on to overturn the Court of Appeal’s decision. Determining whether there is a likelihood of confusion in any given case requires a multi-factorial assessment which, the court said, could reasonably result in different outcomes where different judges faithfully apply the law. In the Supreme Court’s opinion, the High Court had correctly applied the multi-factorial test and considered the post-sale context (including the effect of an angled view on the Dream Pairs sign) in reaching its conclusion that there was only faint similarity between the signs in issue and no likelihood of confusion. It was not enough that the Court of Appeal judges would have reached a different conclusion on the facts. The High Court’s decision had to have been irrational (which the Supreme Court found it was not) or contained an error of law or principle (which the Supreme Court found it did not). The Court of Appeal was not therefore justified in re-evaluating the High Court’s assessment and substituting its own view.

In practice, this judgment serves as a stark reminder that the bar for overturning a first instance decision in UK trade mark infringement proceedings remains high - appeals will not warrant a re-evaluation of a case unless it can be shown that the first instance decision was irrational or contained an error of law or principle, which requires more than the appellate court disagreeing with the earlier court’s factual assessment.

The judgment does though give brand owners the freedom to present more creative submissions when seeking to establish trade mark infringement on the grounds of likelihood of confusion, with greater focus on post-sale evidence expected in future cases. This may make it easier for trade mark owners to successfully establish infringement, as it gives them more routes to argue that consumers would be confused in different circumstances, outside the context of sales.

A number of sub-licences had also been granted, including in the UK. Whilst the structure of the sub-licensing arrangements wasn’t entirely clear, the court proceeded on the basis that they were non-exclusive licences that had been granted by the Exclusive Licensee. Importantly, none of these sub-licences had been registered with the UKIPO until April 2025.

The Propietor and the Exclusive Licensee had brought successful trade mark infringement proceedings against SportsDirect for actions that had taken place between 2013 and 2015, and had elected for an inquiry as to damages, claiming all loss they and/or their licensees had suffered as a result of the infringement (amongst other things).

In that context, three questions arose before the court:

1. Does a sub-licensee have to be joined to the proceedings in order to claim losses they have suffered?
2. Does a trade mark sub-licence have to be registered in order for a trade mark owner or exclusive licensee to be able to recover damages sustained by the sub-licensee?
3. Can a sub-licensee apply to register their interest “late” and, if so, what is the effect of such late registration on the recovery of damages before the application for registration was made?

The court answered the first question in the negative. Generally speaking, non-exclusive licensees have no right to bring infringement proceedings and, as the court had proceeded on the basis that the sub-licences in question must all be non-exclusive, the relevant sub-licensees should not (and could not) be joined as a claimant. However, sub-licensees who have suffered loss may be entitled to intervene in proceedings brought by the trade mark owner under section 30(6A) TMA.

As for the second question, the TMA is clear that any loss suffered or likely to be suffered by licensees (including sub-licensees) is to be taken into account where a proprietor (or exclusive licensee, in appropriate cases) brings infringement proceedings. Where such losses are claimed, the court will assess them in the round and may then give directions on the extent to which the proceeds of any damages awarded are to be held for licensees (including sub-licensees) (section 30(6) TMA).

The court found that until an application to register a sub-licence has been made, the sub-licensee will have no right to intervene in proceedings under section 30(6A) TMA, nor will they be able to obtain the benefit of the court apportioning damages to be held on their behalf. However, the court concluded that failure to register has no effect on the trade mark owner’s rights to claim for losses suffered by its licensees/sub-licensees.

This does not necessarily mean that all such losses will be awarded – the court is only required to take those losses into account – but the trade mark owner will be able to seek to recover them. The court did, however, add that, in order for the court to assess the losses in question, the trade mark owner will need to plead the relevant licences in full and provide copies of them.

As for the final question, the court found that there is no time limit for registering a licence in order for a licensee to obtain the protections under section 30 TMA. For the purposes of section 30(6) TMA, where registration is “late”, the court can make “such directions as it thinks fit” so that the trade mark owner is not over-compensated. However, it is worth noting that licensee intervention under section 30(6A) may be refused by the court if the application for intervention is made late and is prejudicial to the defendant.

In practice, whilst registration is not required for the court to be able to take into account licensee losses in infringement proceedings brought by the trade mark owner, it is prudent for sub-licensees to seek registration to ensure they can benefit from the full protections of the TMA (assuming they are entitled to damages for infringement under the terms of the licence). However, as this case shows, all is not lost if you have not done so – late registration is better than no registration. It is, however, important when claiming losses down the chain to provide clarity around the licensing structure being relied on. The court was clearly frustrated by the lack of clarity in this case.

Article 54(2) of the European Patent Convention (EPC) defines “state of the art” as “everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application”. Whilst at first glance that might seem like a straightforward definition to apply, it has thrown up a number of difficult questions, particularly where products are concerned. This was at the heart of the dispute which led to the referral in G1/23.

Mitsui Chemicals owns a European patent relating to an encapsulating material for a solar cell. Borealis GmbH opposed that patent on the ground that it lacked inventive step over a commercially available complex polymer product called “ENGAGE® 8400”. It was common ground that ENGAGE® 8400 was commercially available, but the method for manufacturing it was not in the public domain. The parties also agreed that manufacturing ENGAGE® 8400 would not be straightforward even if the skilled person could access it for analysis. The parties disagreed, however, about the impact of this lack of reproducibility on the state of the art and, in particular, whether ENGAGE® 8400 should be treated as prior art when assessing inventive step.

The Opposition Division found that ENGAGE® 8400 did not form part of the state of the art, rejecting the opposition in the process. Borealis appealed and that ultimately led to a number of questions being referred to the EBA (see below). Importantly, the referring court concluded that if ENGAGE® 8400 was part of the state of the art, then the patent would be invalid on the grounds of obviousness. Determining whether ENGAGE® 8400 formed part of the state of the art was therefore critical to the outcome of the opposition.

The answer depended on the correct interpretation of a previous EBA decision (G1/92), which had commented on the meaning of “made available” in Article 54(2) EPC in the context of products that were on the market. In that case, the EBA said, “where it is possible for the skilled person to discover the composition or the internal structure of the product and to reproduce it without undue burden, then both the product and its composition or internal structure become state of the art.”

With this in mind, the referring court referred the following three questions to the EBA:

1. Is a product put on the market before the date of filing of a European patent application to be excluded from the state of the art within the meaning of Article 54(2) EPC for the sole reason that its composition or internal structure could not be analysed and reproduced without undue burden by the skilled person before that date?
2. If the answer to question 1 is no, is technical information about said product which was made available to the public before the filing date (e.g. by publication of [a] technical brochure, non-patent or patent literature) state of the art within the meaning of Article 54(2) EPC, irrespective of whether the composition or internal structure of the product could be analysed and reproduced without undue burden by the skilled person before that date?
3. If the answer to question 1 is yes or the answer to question 2 is no, which criteria are to be applied in order to determine whether or not the composition or internal structure of the product could be analysed and reproduced without undue burden within the meaning of opinion G1/92? In particular, is it required that the composition and internal structure of the product be fully analysable and identically reproducible?

The referring court suggested two possible interpretations of G1/92 for the EBA to consider, where the composition of a product (and the product itself) cannot be reproduced – (i) both the composition and the product itself (in its entirety) must be excluded from the state of the art, or (ii) only the composition is excluded from the state of the art but the product itself and its reproducible properties are included.

The EBA rejected the first interpretation. In its view, if this interpretation was correct, it would mean that non-reproducible products would have to be excluded from the common general knowledge (as the common general knowledge cannot extend beyond the state of the art). In turn, non-reproducible products could not be used as starting materials by the skilled person when considering any particular problem. Taking this to its logical conclusion, the EBA found that “there are no products on earth that are in the end not based on materials that themselves cannot be reproduced”. This interpretation therefore led to the “absurd” result that no material would belong to the state of the art and so the EBA concluded it could not be right.

The second interpretation was also rejected for similar reasons.

Instead, the EBA found a third way, deciding that the concept of reproducibility should be read in a broader sense to include the ability for the skilled person to obtain the product from the market in its readily available form. This ultimately rendered the reproducibility condition from G1/92 redundant and led the EBA to answer the first question in the negative.

On the second question, the EBA concluded that the answer was clearly yes - there is no reason that technical information about a product that is itself part of the state of the art should be excluded. Given the above, the third question was moot.

In practice, this decision broadens the scope of what can be treated as prior art under the EPC. It will be seen as good news for those looking to challenge patent validity. But raises additional considerations for would-be patentees, who will need to think even more carefully about whether to place new products (that may be hard to reproduce) on the market before patent applications have been filed.

Transparency has long been a point of contention between SEP holders and implementers, particularly around pricing and essentiality. On the pricing side, licence rates agreed between SEP holders and implementers tend to remain confidential, which can make it tricky for implementers to determine whether rates offered to them are fair, reasonable and non-discriminatory (FRAND). This can lead to some implementers significantly overpaying for licences. Given the high costs of litigation in this space, it is also not always possible for implementers to challenge suspected non-FRAND rates through the courts.

To address this, the UKIPO is considering introducing a new “Rate Determination Track” to the Intellectual Property Enterprise Court, which would focus on the narrow issue of rate setting in cases where infringement, validity and essentiality are not disputed. The UKIPO believes this could enable parties to obtain an independently adjudicated (and binding) licence rate in a more efficient and cost-effective way and, in turn, it notes that publication of rates determined in this way would help to improve transparency and efficiency for other SEP licence negotiations (although the UKIPO acknowledges that such publication may deter some stakeholders from using the Rate Determination Track altogether).

Problems can also arise with the current lack of transparency around which patents may have been declared essential to any given standard. Whilst some standard development organisations do publish information on essentiality, as things stand, there is no single source that can be consulted. This, combined with the scale of patents declared essential to any given standard, can make it difficult for implementers to determine which patents they need to license in order to implement the relevant standard and who they need to get those licences from.

To help alleviate this issue, the UKIPO is considering introducing an additional search function into its One IPO Search service, which would allow users to search for SEPs, with the results highlighting which standard the patent has been declared essential to. However, in order to achieve this, the UKIPO would need to mandate (or otherwise incentivise) patent owners to provide this information.

Closely linked to the above, the UKIPO is also gathering evidence on the effectiveness of existing pre-action protocols in the SEP sector and whether there would be a benefit to introducing a specialist pre-action protocol for SEP licensing disputes – the main objectives being to reduce information asymmetry, by encouraging better exchange of information on pricing and essentiality, and providing consequences for non-compliance.

In addition to the transparency issues noted above, the UKIPO is seeking to gather evidence on a number of other points, including:

• Existing demand for, and use of, essentiality-checking services – including how accessible (and affordable) such services are, particularly for SMEs, and whether there is any scope for the UKIPO to introduce its own such service.
• Whether the remedies available under the current patent framework are adequate and being used appropriately. In particular, the UKIPO notes concerns raised by implementers about SEP owners using the threat of an injunction to extract so called “supra-FRAND” rates, and has asked for evidence on how widespread that practice is and the extent to which it may inhibit innovation.
• The use and effectiveness of alternative dispute resolution (ADR) services, including mediation, in SEP disputes. Whilst the UKIPO doesn’t appear to be considering mandating the use of ADR, it is keen to understand how frequently ADR services are being used for SEP licensing disputes and whether there is a need to expand existing ADR services (like the UKIPO’s mediation service) to provide further support in this space.