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WHEN THE SALE ENDS BUT CONFUSION BEGINS: THE UNTOLD STORY OF POST-SALE TRADEMARK BATTLES

October 15, 2025

*Mr. Shivam Tah
**Mr. Mohamad Uvesh

INTRODUCTION:

To determine the similarity and distinctiveness of the marks, courts have to rely on various rules and doctrines. In this blog, the attempt is made to enunciate the principles, tests and applicability of three rules: Dominant Feature Test, Anti-Dissection Rule and Post Sale Confusion Doctrine. The blog attempts to critique the position of law that the dissection rule and dominant feature test are mutually inclusive.

The doctrine of post-sale confusion is an established legal principle in the jurisprudence of the United Kingdom and the United States of America; however, it is very novel to Indian Jurisprudence. In this blog, an effort is made to explain the origin and principles of the doctrine, to define and examine when “post-sale confusion” occurs, what the concept of “harm” entails, and the nexus between such confusion and “harm”.

ORIGIN AND PRINCIPLES OF THE POST-SALE CONFUSION DOCTRINE

The Honourable Supreme Court in the case of Pernod Ricard India Private Limited & Another vs. Karanveer Singh Chabra has been expressed through obiter dicta that the Post-Sale Confusion Doctrine is new to our jurisprudence, but it is rooted in a legal principle in the jurisprudence of the United Kingdom and the United States of America. It further added that the development of the doctrine is a significant phenomenon in trademark jurisprudence, and this development warrants a comprehensive analysis.

The Post Sale Confusion can be defined as, “Confusion on the part of the public as to the trade origin of goods or services in relation to which impugned sign has been used, which only arises after the goods or services have been purchased”. Prevention of and protection against consumer confusion is the gist and substance of trademark law. However, the doctrine does not find explicit mention in the Lanham Act. The said Act establishes the trademark law in the United States. In 1962, to make the Act more inclusive to include potential purchasers and actual purchasers, the word “purchaser” was omitted. This amendment nudged US courts to develop this doctrine in many cases, like Contacts, Inc. vs Lens.com. Now, trademark liability is extended to point-of-sale and post-sale confusion. The genesis of this doctrine can be traced back to preventing the dilution of a brand’s reputation and goodwill, where purchasers at the point of sale are not deceived; however, the public at large is deceived due to confusion after the sale. Due to its distinctive characteristics, the difficulty in establishing post-sale confusion as a cause of action is relatively higher than establishing a cause of action in point of sale confusion. The proof of harm is a necessary element to support the claim of post-sale confusion to justify the liability.

SINE QUA NON OF POST SALE CONFUSION

The situation of the post-sale confusion arises when the mark of the product is identical, that similarity becomes so material and principal to post sale observers that they observe it, the observation is out of the knowledge of the post-sale observer about being able to spot similarities or identicalness but such the degree of such knowledge is not such observer can deduce that product does not originate from the brand that they had assumed. The doctrine visualises a personality of observer, who is perfectly able to find the identity or similarity of the mark of a product, but fails to acknowledge the differences between the product which the observer has thought of and the product they see. Considering these essentials, it is challenging to demonstrate and establish the scenario of post-sale confusion.

HARM AND ITS KINDS

The confusion with respect to the source of good does not bode well in terms of the economy at large, as confused customers will spend resources to find a product of predetermined and specific standard; on the other hand, the inputs invested by producers with respect to quality go in vain. Prevention of and protection against consumer confusion is the gist and substance of trademark law. However, to charge liability, the confusion should be material and relevant. It should cause harm to either the consumer or the producer.

In the case of a Post-Sale Scenario, the harm can generally be of two kinds: damage to the brand's reputation with respect to quality and harm to the brand's exclusivity. In harm to the reputation of the brand with respect to quality, the observer can recognise and perceive that the mark of the brand she thinks is from the source; however, she is unable to recognise and discern that the product is not from the true source (original source). This should be coupled with the effect of the establishment of a negative association in the mind of the observer. Thus, it damages the brand's reputation with respect to quality. To exemplify it, consider a situation where Pen of similar mark and dress to that of Pen Z is in poor condition, based on which the observer forms a negative opinion with respect to the durability of Pen Z. The probability of this scenario occurring is narrow.

Considering the harsh test of what constitutes the “post-sale confusion” and the proof of harm with respect to damage to reputation, it is difficult to prove the prima facie case, and it goes against the trite law of trademark jurisprudence, which goes, “the life of trademark depends upon promptitude with which it is vindicated”. The trade in luxury goods is based on their being a symbol of or associated with high social or economic standing. When such quality is lost, the idea of high social or economic standing becomes upside down. Thus, when the general public uses knockoffs of luxury brands, there is a sense of harm to the exclusivity of consumers and producers of the luxury goods. Here, the locus is not on the quality of the product but the quality of the persons using it. The consumers of luxury products yearn for exclusivity, which users of knockoffs shatter. When the mind is applied in a pedantic manner, it is realised that this is not confusion as envisaged by trademark law. The general public is aware that they are using knockoffs of luxury brands, so users of these brands are often aware of the distinction. There is no confusion on either side, whether users of luxury goods or those of knockoffs, at any juncture, whether it is at the point of sale or post-sale. Agreed with the fact that knockoffs are against the spirit and policy of the law. Users and producers of luxury brands, under the guise of the Post-Sale Doctrine, are using trademark law as a tool to limit access to select status makers.

CONCLUSION

The Post-Sale Confusion Doctrine is a profound, though multifaceted, evolution in trademark law that extends protection past the sale point to guard against fraud experienced by the viewing public. Its newness in India, along with strict requirements for establishing harm—either damage to reputation or damage to exclusivity makes its enforcement difficult. Establishing harm to reputation for quality is fact-specific and limited. Its more contentious application, relating to copies of luxury items, threatens to use trademark law not to eliminate consumer confusion regarding source, but to safeguard the unique social status that attends a brand, even where onlookers are obviously cognizant they're looking at a fake. As this doctrine gains traction, the courts will need to keep a careful eye: Is the complaint really one of actual source confusion (the intent of trademark law), or a manoeuvre to restrict market entry and defend social prestige? A careful judicial balance is needed to see that the doctrine is kept as a beneficial tool against actual deception, but not an excessive restriction on competition. The principal challenge is defining "confusion" and "harm" clearly in the dynamic post-sale world.

REFERENCES

  1. Pernod Ricard India Pvt. Ltd. & Anr. v. Karanveer Singh Chhabra, Civil Appeal No. 10638 of 2025.
  2. Datacard Corp. v. Eagle Techs. Ltd., [2011] EWHC Pat 244.
  3. Kal Raustiala, Rethinking Post-Sale Confusion, 108 Trademark Rep LAW $ ECONOMICS RESEARCH PAPER SERIES WORKING PAPER 81, 18-28 (2018).
  4. Christopher Jon Sprigman, Rethinking Post-sale confusion, NYU Law & Econ. Resch. Paper No. UCLA SCHOOL OF LAW PUBLIC LAW RSCH. PAPER No. 18-30 (2018).
  5. John Welch, Rethinking Post-Sale Confusion, LAIPLA (Oct. 2, 2025, 9:29PM), https://www.laipla.net/trademark-reporter-commentary-raustiala-and-sprigman-rethinking-post-sale-confusion/.

Author:
*Mr. Shivam Tah,
4th Year B.Com., LL.B. (Hons.) Student, Institute of Law, Nirma University.
**Mr. Mohamad Uvesh,
4th Year B.Com., LL.B. (Hons.) Student, Institute of Law, Nirma University.

Disclaimer: The opinions expressed in the article are the personal opinions of the author. The facts and opinions appearing in the article do not reflect the views of the Alliance Centre for Intellectual Property Rights (ACIPR) and the Centre does not assume any responsibility or liability for the same.