"Subtle but insidious" transfer from pheasant to pigeon cooks Fraser's goose

For once, there are no jokes about Bird & Bird, but the Chancery Division of the High Court, England and Wales, ruling in Jack Wills Ltd v House of Fraser (Stores) Ltd [2014] EWHC 110 (Ch) was handed down last Friday (31 January 2014) by Mr Justice Arnold.  This account of the case comes straight from the horse's mouth, as it were, emanating from Hogarth Chambers, whose Roger Wyand QC and Andrew Norris represented the victorious claimant.  So what's the story?

"Jack Wills complained that the rights in its logo comprising a ... profile of a pheasant wearing a top hat with a cane in its claw [illustrated, above right] had been infringed by House of Fraser’s use of a logo on its own brand casual clothing comprising a ... profile of a pigeon wearing a top hat [left]. A comparison of the marks as they appeared on shirts is below. 

Mr Justice Arnold held that the House of Fraser pigeon was likely to cause confusion.

There are several points of interest.

First is the identity of the average consumer. Although the goods were the same, the parties targeted different age groups. The Judge held that the average consumer included people in the Jack Wills target group, namely younger people, but also included older people, including those who purchased clothes as gifts for younger people. In general, he said the average consumer varies in age and socio-economic class. Similarly, it is rare for a trade mark to have precisely the same degree of distinctive character to all persons of whom the average consumer is representative. Some will know the trade mark and some will be ignorant of it [Says Merpel, noting that this year's buzz-word seems to be "nuanced", it's good to see such a nuanced approach being taken to the concept of the average consumer and his or her attributes]. The Judge held that the pheasant logo had both inherent and acquired distinctiveness and, because it had acquired distinctiveness to one segment of the class of persons represented by the average consumer, that acquired distinctiveness would increase the likelihood of confusion in relation to that segment. The average consumer must be viewed as a whole though ,and not just the one sector for whom it has acquired distinctiveness.

Second is the role of intention in establishing unfair advantage. The Judge held that the court could consider not just the subjective intention of the competitor in using the sign but also the objective effect that the defendant would benefit from the use of its sign from the reputation and goodwill in the claimant’s mark. Such objective effect could amount to an unfair advantage even if it is not proved that there was a subjective intention to exploit that reputation and goodwill.

Finally, the Judge concluded that there was no need to establish positive evidence that the economic activity of consumers of the defendant’s goods and services was affected by the use of the sign. Logical deductions could be made as long as they were not mere supposition. The deductions should take into account the normal practice in the relevant commercial sector, as well as in the circumstances of the case".

In case anyone is wondering, the final point -- that there's no need to establish positive evidence, since logical deductions can also be made -- is not a judicial flight of fancy. It owes its provenance to none other than the Court of Justice of the European Union.  As Arnold J states at [83]:

"In my judgment the correct way to approach this question is to proceed by analogy with the approach laid down by the Court of Justice in Environmental Manufacturing [unreported but noted by the IPKat here] in the following passage:

"42. Admittedly, Regulation No 207/2009 and the Court's case-law do not require evidence to be adduced of actual detriment, but also admit the serious risk of such detriment, allowing the use of logical deductions.

43. None the less, such deductions must not be the result of mere suppositions but, as the General Court itself noted ... , must be founded on 'an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case'."

The learned judge accordingly concluded, at [110], that

" ... it is a legitimate inference from the nature of the particular market, the nature of the logos and the circumstances of the case, that, due to its resemblance to the Trade Marks, the effect of House of Fraser's use of the Pigeon Logo will have been to cause a subtle but insidious transfer of image from the Trade Marks to the Pigeon Logo (and hence from Jack Wills' goods to House of Fraser's goods) in the minds of some consumers, whether that was House of Fraser's intention or not. This will have assisted House of Fraser to increase the attraction of its goods in circumstances where House of Fraser did not undertake any advertising or promotion of those goods. Furthermore, House of Fraser had no justification for such conduct".

How to cook a pigeon here
How to cook a pheasant here
How to cook a goose here and, in the context of this litigation, here