“(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors; (b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question; (c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details; (d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements; (e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components; (f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark; (g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa; (h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it; (i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient; (j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and (k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.”
“In my judgment the general position is now clear. In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer’s mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context.”
“i) In his witness statement, Mr Haddad attempted to present a picture of BHPC as a successful global brand …. The reality is significantly different. … iii) … I am satisfied that a good range of BHPC goods have been sold over the years in Italy, comprising menswear predominantly, with some kidswear, footwear, bags and accessories, supported by some promotional activity, giving rise to the BHPC mark having a reputation in Italy for such goods. iv) I am prepared to find the BHPC brand has a reputation in Spain for bedding and bags. v) So far as the UK is concerned, I find the BHPC brand has a reputation for Luggage, Men’s Underwear and, due to sales in 2017 and 2018, for children’s clothing. I saw no evidence of sales of women’s underwear in the UK. vi) The position as regards other goods and in other countries of the EU is too obscure and uncertain for me to find any reputation. The market for clothing and the other goods of the types sold by BHPC is huge across the UK and EU and the total inferred retail sales of BHPC branded goods over 9 years (2010-2018) for various categories of goods are small. vii) When one looks at the individual years, other than where I have found reputation, the sales figures indicate sales took place in a rather sporadic fashion, consistent with a pattern of new licensees being signed up, putting in early effort but then losing heart and the licence terminating. This pattern is not consistent with a successful brand.”
“i) The sale of branded clothing from the shop on D1’s premises started very early in the life of the Club. ii) The international licensing business started before 2005. … D1 had a licensee which operated at least in Argentina. iii) In about late 2010, D1 first engaged D4 to promote the exploitation of D1’s brand, particularly abroad. This resulted in various licence agreements being signed: a) Panama: late 2011/early 2012 with Mays Zona, which Mr Amoore identified as ‘our biggest licensee’. He said their agreement covered a number of countries and Mays would get local sub-licensees in particular territories such as Chile. He also said that the local licensees would produce a clothing line to suit the market in their territory so, for example, there was not a standard polo shirt which was sold by all licensees. b) Chile, Peru: agreement extended in about early 2012; c) Mexico: May 2014; d) UAE: about May 2015.” a) Panama: late 2011/early 2012 with Mays Zona, which Mr Amoore identified as ‘our biggest licensee’. He said their agreement covered a number of countries and Mays would get local sub-licensees in particular territories such as Chile. He also said that the local licensees would produce a clothing line to suit the market in their territory so, for example, there was not a standard polo shirt which was sold by all licensees. b) Chile, Peru: agreement extended in about early 2012; c) Mexico: May 2014; d) UAE: about May 2015.”
“Overall, the existence and prominence of RL Polo and of USPA in certain markets (in particular not the UK), and of other ‘polo-themed’ brands in varying degrees in other markets, all using variants of horse and rider motifs, indicates that, with RL Polo as the exception, the average consumer cannot rely on the motif as reliably indicating trade origin. In a sense, for a polo-themed brand, a horse and rider motif of some sort is almost de rigeur. Therefore, the average consumer has to rely on other material in the branding as well as indicating origin. This, of course, is consistent with the notion that the average consumer normally views the Mark and the Sign each as a whole and does not dissect either into its constituent elements.”
“Generally, I reject the Cs’ contention that the words POLO CLUB are distinctive, whether in South America or elsewhere, along with the related proposition that the other words in the Sign and Mark are either irrelevant or of lesser importance.”
“252. Having considered these categories separately, I must step back and consider them collectively. Having done so, I was struck by how insubstantial this evidence was, bearing in mind the fact that these two brands had traded in the same market (in Panama in particular) for many years, possibly as much as 10 years (2011-2021). Even if the period was only 7 years (say 2011-2018), I would still have expected much more evidence of confusion to have come to light, if it had really been occurring. The circumstances in this case are not ones where instances of confusion would not come to the attention of Mr Haddad or Ms Borycz. Evidently, licensees were not shy of making complaints. Furthermore, Mr Haddad and the Cs have been involved in various trade mark disputes for a number of years. Even if the early years were dominated by oppositions and not infringement litigation, the Cs must have understood the value of recording and documenting instances of confusion which came to their attention. 253. In these circumstances, if there really was confusion occurring between these brands by purchasing consumers, I would have expected a much more substantial body of incidents to have been reported and recorded.”
“260. In all relevant countries, the goods of both brands have a price premium over unbranded goods. They are not in the prestige sector of the fashion market, but sit in what is sometimes called the mass-tige sector. The relevance is that consumers of these goods are prepared to pay more for the brand, and therefore have a degree of brand awareness. This means that, contrary to the Cs’ position in closing, the level of attention is not low but at least medium if not slightly higher. 261. For the reasons already explained, I find that this brand awareness extends to a general recognition of other ‘polo’ brand(s) in the same territory. For all territories in issue, this means at least RL Polo. In some territories it includes other ‘polo’ brands. 262. In saying this, I recognise that consumers do not have the overview that the evidence in this case presents to me. In any event, I also recognise that the average consumer of the goods in question will not have encountered most of the other ‘polo-themed’ marks present in the relevant territory. However, even if they have never purchased a RL Polo product, the average consumer for these goods will be aware of that brand and its horse and rider logo at least and is likely, depending on the territory, to have encountered other ‘polo-themed’ brands as well.”
“304. Although there has not been the type of side by side trading in the UK as has occurred in Panama, that side by side trading sheds some light on what would occur in the UK. In addition, I consider that UK average consumers have a greater ability and propensity to distinguish between these brands because they will more clearly recognise the place name contained in each of the Mark and the Sign. 305. In all the relevant circumstances in the UK, I find there is no likelihood of confusion.”
“the more distinctive the earlier mark, the greater will be the likelihood of confusion”
“… according to the case-law of the Court, the more distinctive the earlier mark, the greater the risk of confusion (SABEL, paragraph 24). Since protection of a trade mark depends, in accordance with Article 4(1)(b) of the Directive, on there being a likelihood of confusion, marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character.”
“Counsel for Jack Wills submitted that the Trade Marks were inherently very distinctive. Counsel for House of Fraser did not suggest that the Trade Marks were devoid of distinctive character. His primary submission was that the Trade Marks and the Pigeon Logo were distinctively different from each other. I shall consider that question below. In the alternative, he submitted that, if the differences between the Trade Marks and the Pigeon Logo did not suffice to enable the average consumer to distinguish between them, then it followed that the Trade Marks were insufficiently different from other bird logos to possess distinctive character. I do not accept this argument. Leaving aside the fact that it ignores the difference between the dates at which the validity of the Trade Marks and the issue of infringement fall to be assessed, the Pigeon Logo is closer to the Trade Marks than the Trade Marks are to any other bird logo of which there is evidence of use in the United Kingdom. Taking account of the other bird logos of which there is evidence of use, I consider that the Trade Marks have a substantial degree of inherent distinctive character. An important factor in the distinctive character of the Trade Marks is their anthropomorphic aspect, and in particular the fact that the bird is equipped with accessories associated with an English gentleman.”
“Although I accept that consumers will have become accustomed to distinguishing between different bird logos on clothing, they are not accustomed to distinguishing between logos consisting of silhouettes of anthropomorphic birds wearing top hats and other accessories of an English gentleman.”
“ … does not show that there is common use of lower case ‘e’ trade marks in the vehicle rental sector in the UK. Still less does it show that the use of lower case ‘e’ logos on a green background is common. The opposite is true.”
“17. The proprietor’s right to protection of his mark from infringement is neither genuine nor effective if account may not be taken of the perception of the public concerned at the time when the sign, the use of which infringes the mark in question, began to be used. 18. If the likelihood of confusion were assessed at a time after the sign in question began to be used, the user of that sign might take undue advantage of his own unlawful behaviour by alleging that the product had become less renowned, a matter for which he himself was responsible or to which he himself contributed. 19. Article 12(2)(a) of Directive 89/104 provides that a trade mark is liable to revocation if, after the date on which it was registered, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service in respect of which it is registered. Thus, by balancing the interests of the proprietor against those of his competitors in the availability of signs, the legislator considered, in adopting this provision, that the loss of that mark’s distinctive character can be relied on against the proprietor thereof only where that loss is due to his action or inaction. Therefore, as long as this is not the case, and particularly when the loss of the distinctive character is linked to the activity of a third party using a sign which infringes the mark, the proprietor must continue to enjoy protection.”
“24. In my view, Arnold J, as he then was, in Och-Ziff was saying that the CJEU took the view that, in considering infringement of a registered trade mark, it was not appropriate to look so broadly at the context that use which was prima facie infringing was nonetheless to be regarded as non-infringing because other, separate, acts of the defendant had countered actual deception. An extreme example is where a defendant uses a well-known brand for counterfeit goods but nonetheless makes it very clear that the goods are in fact counterfeit so that no actual purchaser is confused. There may be no actual confusion as a result of the use of the sign but there is nonetheless trade mark infringement because the court must focus on the use of the sign in question not the other statements by the defendant as to the trade origin of the goods. 25. Accordingly, while it is right to take the context in which the given sign will be seen into account, I am not persuaded that it would be right to expand the view so broadly as to take account of the fact that a given sign only appears in this case after a different sign has been used. To that extent, each use of the signs must be examined separately in what might be described as its ‘local’ context. … 164. I have also considered, in accordance with the guidance in Specsavers, and generally whether there is anything about the context of presentation of the marks which negates that result. In my view there is not. It is also necessary for the court to be cautious in adopting an overly expansive approach to taking account of context in a trade mark claim. One purpose of registered trade mark protection (in which it is distinguished from passing off) is to provide an element of exclusivity in the use of a registered mark, regardless of the wider context in which it is used, so long as the conditions for protection are fulfilled.”
“With regard … to the agreement between the parties, it must be noted that by that agreement the applicant undertook, inter alia, not to seek registration of the trade mark OMEGA in respect of apparatus industrially or scientifically employed for measuring or controlling variable parameters such as temperature, pressure, force, load, vibration, electrical conductivity, liquid level, acidity, humidity, strain and flow. However, it is not apparent from the provisions of that agreement that the intervener undertook not to oppose registration of the trade mark OMEGA by the applicant. In any event, without its being necessary to consider the consequences of the agreement for the parties, the fact remains that the agreement is irrelevant to the assessment of the likelihood of confusion in the present case.”
“These co-existence agreements indicate that RL considers the combination of differences in the appearance of the horse and rider motif and the accompanying words are sufficient to avoid consumer confusion. Of course, RL has not had to assess or consider the comparison I have to make in this action, but the point is that the comparisons RL had to consider involved less distinguishing matter than I have to consider. The views of RL which I infer from these co-existence agreements are in no sense determinative and I must still carry out the process of comparison and global assessment required by the caselaw.”