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This article was first published on Lexis®PSL IP & IT on 11 February 2014. Click here for a free 24h trial of Lexis®PSL.

Jack Wills and the power of logo marks--A bird in hand is worth two in the High Court
11/02/2014 IP & IT analysis: Pigeons, Pheasants, Penguins--how similar do logos have to be for there to be likelihood of confusion? Simon Clark, head of Berwin Leighton Paisner LLP's intellectual property group, discusses the trade mark dispute between Jack Wills and House of Fraser.

Original news
Jack Wills Ltd v House of Fraser (Store) Ltd [2014] EWHC 110 (Ch), [2014] All ER (D) 09 (Feb) The Chancery Division decided that the defendant department store retailer, House of Fraser, had taken unfair advantage of the reputation of the claimant's trade marks. Taking account of all factors, there was a likelihood of confusion on the part of the average consumer between the trade marks and a logo used by House of Fraser. It followed that the trade marks were infringed.

What does this case tell us about the extent of protection offered to logos used as part of a company's branding?
The case shows that a trade mark for a logo can be equally as powerful as a trade mark for a brand name--indeed, the criteria for qualification of protection and infringement are the same. This was particularly the case here where the logo in question did not include any words at all (some companies have to register a stylised version of their brand name where the meaning of the words which make up their brand are too descriptive of the goods or services offered under the brand). If you are first to file the logo as a valid Community trade mark, you are granted a monopoly over that logo and any confusingly similar logo across the EU.

What weight did the court give to the witness evidence in this case?
This was a case where the witness evidence did not appear to play a key role. Since the legal test requires the judge to decide what the average consumer of the goods or services would have thought about the respective marks, it is quite possible to answer this question without any witness evidence. Accordingly, in this case, there was no evidence of actual confusion, so the judge decided that the average consumer in this case was a consumer of casual menswear clothing, exercising a moderate degree of attention who purchased clothing primarily on the basis of visual inspection. He concluded that a significant proportion of such consumers, bearing in mind they would have an 'imperfect recollection' of the Jack Wills logo, would have thought that the House of Fraser pigeon logo was the Jack Wills pheasant logo, or a variant of it.

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How did the court approach Council Directive 2008/95/EC, art 5?
The judge broke down art 5(1)(b) into its six requisite elements: o o o o o o there must be use of a sign by a third party within the relevant territory the use must be in the course of trade it must be without the consent of the proprietor of the trade mark it must be of a sign which is similar to the trade mark it must be in relation to goods or services which are similar to those for which the trade mark is registered, and it must give rise to a likelihood of confusion on the part of the public

It was an easy task to apply these in this case since there was no dispute that the first five elements were established. This simply left the judge having to decide whether there was a likelihood of confusion between the two marks on the part of the public. This he did applying the summary of the principles approved in Specsavers International Heathcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24. Similarly, for the art 5(2) claim, the judge broke the article down into its five requisite elements: o o o o the trade mark has a reputation in the relevant territory the sign is similar to the trade mark the use of the sign complained of gives rise to a 'link' between the sign and the trade mark in the mind of the average consumer, even if the average consumer does not confuse them the trade mark proprietor must establish the existence of one of three kinds of injury ◦ ◦ ◦ -- detriment to the distinctive character of the trade mark -- detriment to the repute of the mark, or -- the taking of unfair advantage of the distinctive character or the repute of the trade mark

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the use of the sign must be 'without due cause'

There was little doubt that the Jack Wills logo had a sufficient reputation, as it is not a particularly onerous requirement. It was accepted that the two signs were similar, and there was no suggestion that House of Fraser would argue that their use was not 'without due cause' if the remaining elements were satisfied. Accordingly, the remaining elements to be determined were whether use of the Pigeon Logo gave rise to a 'link' with the Pheasant logo in the minds of the average consumer, and whether it took unfair advantage of the distinctive character or repute of the Pheasant logo. The judge decided these issues applying European and UK case law, particularly the decision in Case C-487/07 L'Oreal SA v Bellure NV and others [2010] All ER (EC) 28.

How does this decision fit in with prior trade mark decisions?
The UK courts clearly feel that the British consumer struggles to differentiate different species of birds being with the letter 'P'. Just as the court found in United Biscuits (UK) Ltd v Asda Stores Ltd [1997] RPC 513 that the public would confuse a puffin with a penguin (the judge saying in that case that he thought all the average consumer would know about the puffin was that it was a seabird with a multi-coloured beak, although somewhat prophetically he did compare it to the size of a pigeon) when used for chocolate biscuits. In this case, the judge concluded that the public would confuse a pigeon with a pheasant. Of course, it was the particular representation of each which had to be considered, and they certainly looked more similar when their use as small embroidered logos were compared side by side. However, the compelling factor in this case was that both logos featured the birds wearing top hats and other accessories from a gentleman's wardrobe, a feature which none of the other bird logos before the court shared (although again, ironically, some of the penguins in the United Biscuits case were shown wearing scarves, boots and chef's hats). Ultimately, each case will be decided on its own facts. However, the case is particularly interesting in two respects.

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The judge followed his own previous ruling in Och-Ziff Management Europe Ltd v OCH Capital LLP [2010] EWHC 2599, [2010] All ER (D) 07 (Nov) in recognising 'initial interest confusion' as being confusion which can give rise to an infringement. This was where a consumer may have been initially confused when seeing the pigeon logo on the front of a folded polo shirt, for example, and mistaken it for the Jack Wills pheasant, only to realise later on seeing the House of Fraser Linea label inside the garment that it wasn't a Jack Wills shirt. Similarly, the judge recognised 'post-sale confusion' could arise if someone saw a friend wearing a shirt bearing the pigeon logo, when they would not be able to see the Linea label--a concept he had found present in DataCard Corp v Eagle Technologies Ltd [2011] EWHC 244 (Pat), [2011] All ER D) 199 (Feb).

What did the court say as the effect of the infringement on the Jack Wills brand?
For the art 5(1)(b) infringement, the direct effect on the Jack Wills brand is not one of the six requisite criteria to show infringement. It was enough to find that there was a likelihood of confusion between the two marks. For the art 5(2) infringement, Jack Wills had a choice of three criteria to prove in order to establish the fourth of the fifth requisite elements, namely either: o o o detriment to the distinctive character of their trade mark detriment to the repute of their trade mark, or taking unfair advantage of the distinctive character or repute of their trade mark

Since Jack Wills only chose to rely on the third option, it was again unnecessary for them to show any adverse effect on their own business.

What can brand owners learn from this judgment?
A trade mark is the strongest form of IP protection there is since, provided that the brand owner continues using it in respect of the goods and services for which it is registered, once registered it can last indefinitely. The case shows that, provided the mark is distinctive, a logo mark can be just as powerful as a word mark. The case also emphasises that it is quite possible to win a trade mark or passing off case without any evidence of actual confusion. Interviewed by Dave Thorley. The views expressed by our Legal Analysis interviewees are not necessarily those of the proprietor.