Jack Wills Ltd v House of Fraser (Stores) Ltd

Trade mark infringement by likelihood of confusion requires a global and contextual assessment through the eyes of the average consumer. The court must consider the identity or similarity of the goods, the mark’s inherent and acquired distinctiveness, the overall visual and conceptual similarity of the signs, imperfect recollection, and the context of use. Initial-interest and post-sale confusion may suffice.

Protection for a mark with a reputation extends to unfair advantage caused by an image transfer which enhances the attraction of the defendant’s goods. Subjective intent to exploit the mark is highly relevant but not essential. A change, or serious likelihood of change, in the defendant’s consumers’ economic behaviour may be established by logical deductions grounded in market practice and all the circumstances.

The claimant owned UK and Community trade marks for a silhouette of a pheasant wearing a top hat and carrying a cane. The defendant used a silhouette of a pigeon wearing a top hat and bow tie as branding on its Linea menswear. The claimant alleged trade mark infringement and passing off. The passing-off claim was agreed to stand or fall with infringement based on likelihood of confusion.

The court had to decide whether the defendant’s logo created a likelihood of confusion under article 5(1)(b) of the Directive 2008/95/EC and article 9(1)(b) of the Regulation 207/2009/EC. It also had to decide whether the claimant’s marks had a reputation and the defendant’s use took unfair advantage of that reputation under articles 5(2) and 9(1)(c).

1. Judgment for the claimant. The defendant infringed the UK and Community trade marks.
2. The average consumer was a purchaser of men’s clothing, particularly casual clothing, exercising moderate attention. The consumer group was not confined to young devotees of the claimant’s brand. It included a distribution of ages and persons buying clothes for themselves or others.
3. The marks possessed substantial inherent distinctiveness because of their anthropomorphic bird and English-gentleman accessories. Their extensive use had added distinctive character by November 2011. The signs had a reasonable degree of visual similarity and a high degree of conceptual similarity. The goods were identical.
4. A global assessment established a likelihood of confusion. The retail context and absence of proved actual confusion pointed against that conclusion, but did not outweigh the identical goods, distinctiveness, similarity and imperfect recollection. Labels and separate retail zones did not eliminate initial-interest confusion, while persons seeing the embroidered logo after sale would not see the Linea label. A significant proportion of consumers were likely to regard the pigeon logo as the claimant’s logo or a variant and attribute the goods to the same or an economically linked undertaking.
5. Alternatively, the marks had a reputation and the pigeon logo would call them to the average consumer’s mind. Although the claimant could not advance the refused allegation of intentional free-riding, subjective intention was not indispensable. The defendant intended its logo to have brand significance and to make its goods more attractive.
6. The resemblance caused a subtle transfer of image from the reputed marks to the defendant’s logo and goods. That transfer enhanced the attraction of goods which the defendant had not advertised or promoted. The resulting influence on consumers’ economic behaviour could properly be inferred from the market, the logos and the surrounding circumstances. With no due cause, the defendant took unfair advantage of the marks’ reputation.

This was a first-instance judgment. Before trial, Master Bragge refused the claimant permission to amend its particulars to plead intentional free-riding. The claimant did not appeal that order, and the court held that it could not advance the refused case, although it could establish unfair advantage on another basis.