[Guest post] High Court reins in polo-themed trade mark claims

The IPKat is pleased to host the following guest post by Katfriend Alessandro Cerri regarding the recent judgment of the High Court of England and Wales in the Lifestyle Equities v Berkshire Polo trade mark dispute. Here’s what Alessandro writes:

High Court reins in polo-themed trade mark claims

by Alessandro Cerri

In a recent judgment, the High Court of England and Wales (the Court), acting also as a European Union Trade Mark Court, found that Lifestyle Equities’ trade mark rights in the BEVERLY HILLS POLO CLUB mark had not been infringed by the Royal County of Berkshire Polo Club.

Background

This case concerns the latest instance of litigation brought by Lifestyle Equities (Lifestyle), a licensee of the BEVERLY HILLS POLO CLUB mark, against another polo clothing company – this time the UK-based Royal County of Berkshire Polo Club (RCB). Veteran IPKat readers may remember this 2015 blog post covering Lifestyle’s opposition against RCB’s application to register a previous version of their logo as an EUTM.

The most recent instalment of this long-standing feud primarily concerned Lifestyle’s claims against RCB for registered trade mark infringement and passing off in a number of territories, namely the UK, the EU, Chile, Panama, Peru, Mexico, and the UAE.

Although a number of variations of the parties’ marks had been used over the years, the bulk of the Court’s assessment revolved around the two following marks, and whether the mark on the right infringed the mark on the left pursuant to sections 10(2) or 10(3) of the Trade Mark Act 1994 (and their equivalent provisions under the EUTM Regulation):

Playing polo ...

The Court’s judgment

The most interesting elements of the Court’s judgment for trade mark practitioners and brands are those concerning: (a) how the distinctiveness of a mark, or of elements thereof, is to be assessed in a crowded market, such as that of polo-themed apparel; and (b) the relevance of previous co-existence agreements with third parties in this assessment.

It is worth noting that the parties had agreed that all allegations of trade mark infringement were to be determined by the application of UK/EU law, regardless of territory.

Crowded market / context

Lifestyle relied on the judgment of Arnold J in Och-Ziff v Och Capital regarding ‘context’, seeking to argue that to expand the context in which the marks are used in order to take into account separate acts of people other than the alleged infringer (i.e. in this case, other polo brands) would be to inappropriately broaden the context too widely.

The Court said neigh.

Instead, it agreed with RCB that the other polo brands in the market were relevant in that they impinged on the way in which the average consumer would view and recall Lifestyle’s mark, and its distinctive character. The Court relied primarily on the judgments in the Specsavers and Jack Wills cases, in which the relevant judges had dealt with the issue of a ‘crowded market’ impacting upon the distinctiveness of the claimant’s registered trade mark, rather than going towards ‘context’.

In assessing the market, the Court noted that all of the polo-themed brands of any significance mentioned in the evidence featured some kind of horse and rider logo in their branding, all of which were different. Only Ralph Lauren’s operated on its own, without any additional wording. Consequently, the average consumer has to rely on other material in the branding to indicate origin.

Further, given the congestion of similar logos in the marketplace, the Court found that, if a consumer cares about the brand they are purchasing, they must pay attention to the branding – particularly given the above-average prices of the market segment. The average consumer’s level of attention was therefore found by the Court to be “at least medium if not slightly higher”.

Co-existence agreements

Lifestyle sought to argue that: (a) the need for a co-existence agreement demonstrates that brands are in conflict; and (b) in any event, co-existence agreements are not relevant to the assessment of likelihood of confusion, per Omega SA v OHIM.

Again, the Court disagreed on both counts, finding that “the mere existence of a co-existence agreement does not imply a conflict between the marks which would have resulted in a finding of conflict by a court of tribunal” – rather, they imply that the parties are prepared to tolerate the use agreed to, which also “implies that any damage is unlikely to be serious or can be remedied.”

... and Kat wearing a polo

As for the Omega decision, the Court held that the finding was entirely understandable on the facts of that case, but did not establish a more general proposition along the lines suggested by Lifestyle.

In this case, the Court appeared to place particular weight on the co-existence agreements which each of the parties had entered into with Ralph Lauren (which was broadly accepted as being the largest operator in the polo brand market by some length), noting that the agreements provided a “very useful and practical insight into the market for ‘polo’ brands and especially those which feature a polo horse and rider motif”.

The Court found that such agreements indicated that Ralph Lauren considered that the combination of differences in the appearance of the horse and rider motif and the accompanying words are sufficient to avoid consumer confusion. The Court noted that a number of other co-existence agreements had been entered into with other brands as well.

Conclusions

Based on the above, the Court proceeded to rule that the horse and rider motif did not dominate in either of the two marks; the reason being that Lifestyle’s horse and rider motif was not the first in the relevant markets, it was not unique, and has had to coexist with others. The Court went on to find that the degrees of both visual and aural similarity between the two marks was low to medium, in all relevant territories.

The Court carefully went through both parties’ sales evidence (with a fine-tooth comb, I might add!), and found that although Lifestyle’s trading had given rise to some enhancement of the distinctive character of its mark in certain territories, since that trading had taken place in conjunction with Ralph Lauren’s Polo, the enhancement was limited.

Further, the Court was struck by how insubstantial the alleged evidence of actual confusion was. It went on to find no likelihood of confusion, and no infringement. The claims under section 10(3) and for passing off failed as well.

Comment

This is an important judgment on the interaction of brands within a crowded marketplace, particularly as some might have expected the two marks to have more than “low to medium” similarity, were it not for them operating in a marketplace congested with similar motifs.

It also serves as a reminder to brands that co-existence agreements, albeit confidential when entered into and a very practicable/commercial way to avoid a costly dispute, may and will be used against you in a court of law! So it is worth ensuring consistency of approach across the board in this respect.