Lifestyle Equities CV v The Copyrights Group Ltd & Ors

Trade mark similarity must be assessed by considering each mark as a whole, while taking account of distinctive and dominant components. A generic polo horse and rider motif contributes little to distinctiveness where it commonly evokes polo and sport. Material differences in the words identifying the claimed brands may therefore prevent similarity, even where the figurative elements share a common theme. The likelihood of confusion arises only after identity or similarity has been established and requires confusion as to origin, not mere association. A brand-management agency’s preparatory licensing activities do not automatically constitute use of a sign in the course of trade in relation to the claimant’s registered goods. Use of a sign in opposition or revocation proceedings is not trade mark infringement.

The claimants, owners and exclusive licensee of the Beverly Hills Polo Club marks, alleged that Greenwich Polo Club signs infringed their EUTMs and UK trade mark rights and constituted passing off. Claims against four trading defendants had been stayed, but their alleged use was considered because it formed the basis of the claims against the licensing agency, its director and Greenwich Polo Club.

The court considered alleged use in Greece, Cyprus and Bulgaria, the similarity of the signs to the claimants’ Logo, likelihood of confusion, enhanced reputation and injury, passing off, and possible primary or accessory liability of the licensing agency and its director.

1. The claims failed. The court dismissed the pleaded claims under Regulation 2017/1001 on the European Union Trade Mark, the Trade Marks Act 1994 and the tort of passing off. The claims against the fourth defendant were dismissed because the relevant company appeared not to be extant. The court declined to grant an abstract declaration concerning Greenwich Sign 4.

2. For Article 9(2)(b) of the Regulation and section 10(2) of the Act, the requirements included use in the relevant territory and in the course of trade, without consent, use of an identical or similar sign in relation to identical or similar goods, and a likelihood of confusion. Only Greenwich Sign 3 had been used by the trading defendants, and the relevant use was confined to Greece, Cyprus and Bulgaria. There was no actionable use under section 10(2), which concerned the UK mark.

3. Similarity had to be assessed globally, but with the marks considered as wholes. The figurative polo motif was generic and added little distinctiveness. The differences between the single rider in the Logo and the two riders in Greenwich Sign 3 further reduced visual similarity. Most importantly, “Beverly Hills” and “Greenwich” were visually, aurally and conceptually different word elements identifying different origins. The marks were not similar. The average consumer could not be confused, even when reading an unfamiliar alphabet.

4. The Article 9(2)(c) and section 10(3) claims also failed. Although the court considered the relevant requirements, the absence of similarity was decisive. In any event, the evidence of reputation for the relevant goods in Greece, Cyprus and Bulgaria was limited, and there was insufficient evidence of a link in the average consumer’s mind or resulting injury.

5. The passing-off claim failed. The claimants could not establish the necessary case where the statutory infringement claims failed, and granting relief in the territories concerned would give the tort an impermissible extraterritorial effect.

6. The licensing agency’s promotion of Greenwich Polo Club and its preparatory licensing activities did not amount to use of a similar sign in the course of trade in relation to the claimants’ registered goods. Use of signs in EUIPO revocation or opposition proceedings could not constitute infringement. The accessory claims consequently failed because the underlying trading activity was non-infringing.

7. The director’s liability could not be established merely from his role, his signing of licence agreements or his status as the company’s alleged controlling mind. Joint tortfeasor liability required participation beyond constitutional control, including intention, procurement and a common design. Since the company had not infringed, the director’s liability also failed.