Lifestyle Equities CV & Anor v Santa Monica Polo Club Ltd & Ors

Trade mark infringement under sections 10(2) and 10(3) requires a global assessment from the perspective of the average consumer, including visual, aural and conceptual similarity, the goods, context, imperfect recollection and any relevant reputation. Actual confusion is not required, and limited evidence of confusion is not positive evidence that confusion is absent.

For section 10(3), reputation may arise from goods other than those for which the mark is registered. Injury requires more than a mere link or advantage. Dilution requires evidence, or properly founded logical deductions, of a change in economic behaviour. Unfair advantage requires an added factor making the advantage unfair.

The claimants owned UK and EU trade marks comprising the words “Beverly Hills Polo Club” and a polo player on a pony. The defendants used a range of “Santa Monica Polo Club” logos on clothing and footwear.

The action concerned trade mark infringement under sections 10(2) and 10(3) of the Trade Marks Act 1994 and corresponding EU provisions, passing off, breach of contract, procuring breach of contract, and unjustified threats. The trial was split, with liability for joint tortfeasorship reserved to a later hearing.

The principal issues were whether the signs created a likelihood of confusion or a link, whether the claimants’ marks had sufficient reputation, whether injury and lack of due cause were established, and whether the contractual and threats claims succeeded.

1. Section 10(2). The court assessed each sign at the date its use began. The one-horse signs and the two-horse signs created a likelihood of confusion because of their overall visual, aural and conceptual similarities, the identity or similarity of the goods, and the possibility of imperfect recollection. The absence of widespread actual confusion was not decisive. The three-horse sign was visually sufficiently different and did not infringe under section 10(2).
2. Section 10(3). The UK mark had a modest reputation by early 2008 and a substantial reputation from 2010. The EU mark acquired the required reputation from 2010. Reputation could arise from goods other than those for which the mark was registered. All signs created a link with the marks. Tarnishment was unsupported, but earlier signs caused dilution and the three-horse sign caused dilution and took unfair advantage because it was designed to preserve continuity with infringing signs. No due cause was established.
3. The passing-off claim succeeded to the same extent as the section 10(2) claim. The contract claim failed because silence and failure to sue or appeal did not objectively communicate acceptance of the counter-offer. Even if a contract existed, it would have concerned only the logo used on the socks.
4. The claim for procuring breach of contract failed. Following Crystalens v White, a director acting bona fide within his authority required additional features such as conspiracy or dishonesty; none was pleaded or proved.
5. A threat to join a party to existing infringement proceedings is actionable under section 21. The email to TK Maxx was an actionable threat, but the defendants established justification under section 21(2) because the goods concerned bore infringing signs. The threats counterclaim was therefore dismissed.