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A fashionable month for trade marks

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11/03/2014

In the first case, Jack Wills Ltd v House of Fraser (Stores) Ltd [1] the issue was whether House of Fraser’s use of a pigeon logo on clothing infringed Jack Wills’ registered trade mark, also used on clothing. The Jack Wills logo comprises a silhouette of a pheasant with a top hat and cane. The allegedly infringing mark features a silhouette of a pigeon in a top hat, albeit facing in the opposite direction to the first mark. The competing logos can be viewed here.

It is common nowadays for clothing companies to adopt logos as part of their branding – think of Lacoste or Ralph Lauren, for instance – and it is common also for such logos to be registered as trade marks.

Arnold J considered that House of Fraser’s adoption of the “pigeon logo” was a branding decision. He also considered that, even if there had been no deliberate copying, the designer of the House of Fraser pigeon logo may have been subconsciously influenced by the Jack Wills’ pheasant logo.

Arnold J noted the use of other “bird” brands in respect of fashion wear in the UK, including the brands Lyle & Scott, American Eagle, Emporio Armani, Hollister and Original Penguin. He noted that, “leaving aside the fact that none of these are a pheasant (or a pigeon), there are a number of clear differences between these logos and the Mr Wills logo. All of the birds are depicted face-on as opposed to side-on, as with Mr Wills. All of the birds, save for Original Penguin, are in flight as opposed to standing, as Mr Wills does. Most importantly, none of the birds is adorned with human accessories like the top hat, scarf and cane of Mr Wills”.

On the issue of whether there was a likelihood of confusion, this was to be ascertained by reference to the average consumer, who in this case was a consumer of men’s clothing, and particularly casual clothing, who would exercise a moderate degree of attention. Arnold J considered that the Jack Wills logo was inherently distinctive, particularly the way in which the bird was adorned with the accoutrements of the traditional English gentleman. He also considered that the sheer volume of use of the mark had lent it an acquired distinctiveness. The marks had a reasonable degree of visual similarity and a high degree of conceptual similarly; of particular relevance was that in each case the bird was in the form of a silhouette with the accessories associated with an English gentleman. This led to a likelihood of confusion, even allowing for the fact that House of Fraser does not sell Jack Wills clothing. It was immaterial that no evidence of actual confusion had been adduced.

The court went on to find that House of Fraser’s use of the pigeon logo took unfair advantage of Jack Wills’ reputation.

The second clothing case to note was also about the likelihood of confusion between competing marks. In Maier v Asos Plc [2]¸ the defendant sought a declaration of invalidity in respect of the word mark ASOS, registered as a UK trade mark in relation to skin care products, clothing and the bringing together of those products for retail purposes, on the basis of the likelihood of confusion with the claimant’s word mark ASSOS, registered as a Community trade mark in relation to cycling products and clothing, and casual clothing.

The claimant’s mark had been partially revoked in earlier proceedings, resulting in a reduced specification.

Rose J was concerned with the risk of confusion between the marks (as opposed to any factual confusion). In contrast to the pigeon logo case, in this case the judge considered that there was no likelihood of confusion between the two marks. She did, however, modify the ASOS specification to exclude specialist cycling gear in order to minimise the possibility of the defendant competing with the claimant in respect of the marketing of their product.

As these cases illustrate, branding in the clothing and fashion wear sector is playing an increasingly prominent role, as remarked by the judge in the pigeon logo case. In such a competitive environment, it is important to create distinctive marks which distinguish your business from your rivals.

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[1] [2014] EWHC 110 (Ch)
[2] [2014] EWHC 123 (Ch)