Beyond Transactions; Beyond Jurisdictions: Post-sale Confusion & Targeting

Conventionally, trade mark law’s concern has been the likelihood of confusion created by use of a sign which might cause a consumer to purchase goods, mistaking them to be those of the trade mark holder. But in the UK at least, there is recent and increasing focus – and risk of liability – arising from the potential of confusion of potential consumers post-sale. Trade mark scholars label this ‘bystander’ or ‘downstream’ confusion. In 2024, the Court of Appeal, in , found a likelihood of confusion may arise as a result of post-sale confusion even if there is no likelihood of confusion at the point of sale. In contrast, although post-sale confusion arguments were first advanced in US infringement cases as early as the 1950s, the doctrine has received a mixed response across different US circuits. While a relevant case has yet to come before the US Supreme Court, the doctrine has been the subject of recent US academic attention. In the UK, leave to appeal has been granted on the Iconix case, with arguments being heard by the Supreme Court later on this year in March.

Another staple of trade mark law is that a registration’s scope is restricted to the jurisdiction of registration. It would be reasonable to assume, therefore, that infringement can only arise from domestic use. This doctrine has been put under increasing pressure by online sales, where goods can be effortlessly marketed at consumers from outside the physical location of those consumers. The US Supreme Court recently held (in ) that the US Lanham Act is not extraterritorial. Its focus is solely on conduct occurring within the USA, such that no trade mark infringement of US rights arises in the case foreign sales. It is unclear what the implications of this ruling are for online use. In 2024, the UK Supreme Court held differently. In , online seller Amazon's sale of US branded goods to UK-based consumers from its US website did infringe Lifestyle Equities' UK trade marks, because of the site’s targeting of customers within the UK territory.

In this event, our expert panel will seek to explore the tricky issues surrounding trade mark scope concerning targeting and post-sale confusion from a transatlantic perspective.

• Daniel Alexander KC, 8 New Square
• Professor Christine Farley, American University Washington College of Law
• Professor Ilanah Fhima, UCL Faculty of Laws; Co-Director of IBIL
• Professor Jeremy Sheff, St. John’s University School of Law, New York

17:30 Registration and theatre opens
18:00 Event begins
19:15 Q&A
19:30 Reception
This event will be held in-person but will also be live streamed.

Fees for this event are from £8-£35
Free places for UCL students and staff, full time academics, judiciary and government legal services.

Host or Publisher UCL Institute of Brand and Innovation Law (IBIL)