The popular trend of using brand logos on clothing (think Ralph Lauren's polo players, Fred Perry's laurel wreath and Lacoste's crocodile) was the subject of a recent High Court decision. The case concerned House of Fraser's use of a stylised pigeon logo on certain items from their Linea clothing line and whether this infringed Jack Wills' registered trade marks for a stylised pheasant logo.
The claim brought by Jack Wills was based on two arguments. Firstly, that, as a result of the similarities between the two logos and the goods they were being used on, there was a likelihood that House of Fraser's customers would believe that the Pigeon logo branded goods came from Jack Wills and/or were associated with Jack Wills. Secondly, by using a similar mark to Jack Wills' logo, House of Fraser was taking unfair advantage of the earlier mark's reputation and goodwill. Jack Wills was successful in both arguments.
Interestingly, Jack Wills did not put forward any evidence of actual confusion. Instead, they relied upon evidence demonstrating their reputation and extensive advertising/promotional activity. In his decision, the Judge confirmed that evidence of actual confusion was not always a requirement for a successful claim of registered trade mark infringement. However, the length of time that two trade marks have peacefully co-existed together in the same marketplace will be a relevant factor in deciding whether there is a likelihood of confusion.
In addition, the Judge accepted that, although there was no evidence of actual confusion, there were strong arguments to suggest that there was potential for confusion when customers first saw the Pigeon logo on the clothing. Although there might be no confusion at the point of sale (i.e. because customers would by then have seen the Linea labels/swing tags), there would still be "initial interest confusion". He also said that it was likely that friends or relatives seeing items of clothing bearing the Pigeon logo might believe that they were Jack Wills items and not have the opportunity to see the Linea label /swing tag (i.e. "post-sale confusion").
House of Fraser argued that they did not intend to exploit the reputation and goodwill of Jack Wills' pheasant logo, and that, therefore, they did not take unfair advantage of the marks' reputation. The Judge confirmed that intention was not always necessary for a claim of unfair advantage. He explained that if the effect of using a similar sign is that a competitor benefits from an earlier mark's reputation and goodwill, this will amount to unfair advantage, even if there is no intention to do so.
This case is a sage reminder of the important role logo trade marks play in forming part of a brand's identity, and how they can be registered and enforced to ensure that competitors don't unfairly benefit from the time and money invested in their promotion and development.
The full decision can be found here.