Designer clothing trademarks – The Jack Wills Case
How do you differentiate your designer clothing, footwear or headgear from other retailers? You do it through designer clothing trademarks. What happens when other retailers try to copy your designer clothing trademarks? The issue of designer clothing trademarks and similar logos embroided on clothing was considered recently by the UK courts in a very high profile case.The case of:
Jack Wills Ltd v House of Fraser (Stores) Ltd (‘HoF’)* (Arnold J;  EWHC 110 (Ch); 31.01.14)
Although this case doesn’t tell us anything new, ArnoldJ judgement serves as good reminder of the law. The recurring principle to take away is that even if on a comparison of certain characteristics two logos might be quite different, the court may still find them similar on an overall conceptual comparison test.
This article considers ArnoldJ’s review of trade mark law particularly infringement and the interpretation of likelihood of confusion.
This case concerns logos that are embroidered on shirts and other clothing. It is customary in the fashion trade for logos to be used as one of the ways to identify a product as a genuine product from that designer. Examples of shirts with such logos include the Ralph Lauren polo player logo, Burberry equestrian knight logo, Abercrombie & Fitch Moose logo, and the Channel overlapping double “C ” logo. It is common practice for these logos to be protected by trademarks to prevent competitors using similar logos.
In this case Jack Wills (JW) claimed that House of Fraser’s (HoF) use of the pigeon logo with a top hat and bow-tie constituted trademark infringement and passing off of its own “Mr Wills” anthropomorphic logo of a pheasant wearing a top hat and neck tie and carrying a cane. HoF counter claimed for a declaration of invalidity of JWs’ trade marks.
The law concerned Article 5(1)(b) of Directive 2008/95/EC/Article 9(1)(b) of Council Regulation 207/2009/EC and Article 5(2) of the Directive/Article 9(1)(c) of the Regulation.
Article 5(1)(b) Rights conferred by a trade mark
1. The registered trademark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (b) any sign where, because of its identity with, or similarity to, the trademark and the identity or similarity of the goods or services covered by the trademark and the sign there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trademark. Article 5(2) Any member state may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical or similar to the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.
In order to establish infringement under Article 5(1)(b) /Article 9(1)(b) six conditions must be satisfied:
(i) there must be use of a sign by a third party within the relevant territory;
(ii) the use must be in the course of trade;
(iii) use must be without the consent of the proprietor of the trade mark;
(iv) it must be a sign which is similar to the trade mark;
(v) it must be in relation to goods or services which are similar to those for which the trade mark is registered; and
(vi) it must give rise to a likelihood of confusion on the part of the public.
The judgment referred to leading cases on the issue of the interpretation of likelihood of confusion and relative grounds of objections to registration including: Case C-251/95 SABEL BV v Puma AG  ECR I-6191, Case C-39/97 Cannon Kabushiki Kaisha v Metro Goldwyn Meyer Inc  ECR I-5507, Case C-334/05, Case C-342/97 Lloyd Schulhfabrik Meyer & Co Gmbh v Klijsen Handel BV  ECR-3819, Case C-425/98 Marca Mode CV v Adidas AG  ECR I-4861, Case C-3/03 Matrazen Concord GmbGvH V GmbGv Office for Harmonisation in the Internal market  ECR I-3657, Case C-120/04 Medion AG v Thompson Sales Germany & Austria Gmbh  ECR I-8551 and Case C-334/05 Office for Harmonisation in the Internal market v Shaker de L. Laudato & C SAS  ECR I-4529.
ArnoldJ referred to Kitchin LJ summary in Specsavers International Healthcare Ltd v Asda Stores Ltd  EWCA Civ 24 as the most accurate version of the summary of principles established by these cases as follows:
“(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eye 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 service 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 element of that mark;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark, 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 feature 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 latter 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 causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion.”
A number of other legal issues were also addressed by ArnoldJ in his judgment including , reputation, distinctive character through use, the definition of “average” consumer, taking unfair advantage of the distinctive character or repute of a mark, comparison between the respective goods “conceptual” similarity, context of use.
The use of the HoF Pigeon Logo took unfair advantage of the reputation of the “Mr Wills” mark.