Jack Wills has succeeded in its claim against House of Fraser for trade mark infringement in relation to House of Fraser's use of a similar logo on its in-house label "Linea".
Jack Wills, the well-known British casual clothing retailer has a UK and Community registered trade mark for the black logo (shown top right), which is a silhouette of a pheasant with a top hat and cane. It uses the Jack Wills Trade Mark in two other forms, both of which show more detail in the drawing (such as eyes, a jacket and waistcoat) (collectively, the "Jack Wills Trade Marks"). House of Fraser, the department store operator, used a similar image of a pigeon with a top hat and bow tie (the "Pigeon Logo," shown below right) on its range of men's clothing under the brand name "Linea" between November 2011 and February 2013. The Pigeon Logo was used on tags attached to the exterior of garments and a simplified version was embroidered onto the left breast of shirts, sweaters and other garments.
Jack Wills' case under Article 5(1)(b) of the Directive
Article 5(1)(b) of the Directive provides that a trade mark will be infringed where a similar mark is used in relation to similar or identical goods and there exists a likelihood of confusion on the part of the public.
Mr Justice Arnold had little trouble in establishing that the two marks were both visually and highly conceptually similar, each comprising an anthropomorphised bird with top hat and other accoutrements of an English gentleman. There was no dispute as to the identity of the goods.
The average consumer was identified broadly and was not just restricted to the young age group with whom Jack Wills clothes were popular. The average consumer would also include, for example, those from other age groups who purchase the goods for others. It could not be limited to those who were familiar with the relevant trade marks.
Despite there being no evidence of actual confusion, the judge determined that there was a likelihood of confusion. Whilst the judge accepted that consumers had become accustomed to distinguishing between other different bird logos, this was not the case in relation to silhouettes of birds wearing top hats and other accessories of an English gentleman, particularly when the marks were embroidered on the goods in question and bearing in mind that the consumer would not usually conduct a side-by-side comparison of the marks.
The judge found that the Jack Wills Trade Mark was inherently distinctive and has acquired additional distinctive character in the UK as a result of the scale and nature of its use. Consequently, purchasers and wearers of Jack Wills clothing would recognise the Jack Wills Trade Marks as signifying the origin of the clothes. This enhanced distinctiveness of the Jack Wills Trade Marks was a factor contributing towards a likelihood of confusion with the House of Fraser logo.
Further, the fact that the House of Fraser garments bore "Linea" labels, would not necessarily have prevented confusion. There was a likelihood or potential for initial interest and post-sale confusion. The judge found that a significant proportion of consumers were likely to believe that the pigeon logo of House of Fraser was that of Jack Wills or was economically connected with Jack Wills.
Jack Wills case under Article 5(2) of the Directive
Article 5(2) provides that infringement will occur where the earlier trade mark has a reputation and a similar mark is used without due cause in relation to any goods where the use takes unfair advantage of the distinctive character or repute of the trade mark. In the light of the judge's earlier findings, clearly the Jack Wills Trade Marks did have a reputation. In view of the visual resemblance between the marks in issue and the conceptual similarity, the necessary "link" was established, in that consumers seeing the House of Fraser pigeon logo would call to mind the Jack Wills Trade Mark. Jack Wills did not plead (and could not then assert) that House of Fraser deliberately intended to piggyback off the reputation of the Jack Wills Trade Mark. However, in determining whether House of Fraser had taken unfair advantage of the Jack Wills Trade Marks, the judge could still consider House of Fraser's intentions in adopting the offending logo. It was the intention of House of Fraser that the logo should have brand significance, and that was how consumers perceived it. The judge therefore considered this to be an example of a retailer seeking to enhance the attraction of its own brand of goods by adopting an aspect of get-up of prestigious branded goods, and that by doing so House of Fraser were seeking to influence the economic behaviour of consumers of Linea menswear.
In all the circumstances the judge found that the use of the House of Fraser pigeon logo would result in a "subtle but insidious transfer of image" from the Jack Wllls Trade Mark in the minds of some consumers, even if that was not House of Fraser's intention. House of Fraser therefore did take unfair advantage of the reputation of the Jack Wills Trade Mark.
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