Lifestyle Equities C.V. & Anor v Royal County of Berkshire Polo Club Limited & Ors

In assessing trade mark infringement in a crowded market, the court must consider the mark and sign as wholes, including their similarities and differences. Similar generic motifs may affect the distinctive character of a registered mark, but do not automatically make other traders’ use irrelevant. A horse-and-rider motif commonly used for polo-themed brands did not dominate the marks or retain an independent distinctive role. Co-existence agreements may provide relevant market evidence, although they are not determinative. Actual confusion is potentially powerful evidence, but weak, second-hand or administrative incidents may carry little weight. The global assessment must be made through the eyes of the average consumer, having regard to the goods, market context, distinctive character, reputation and imperfect recollection.

The claimants owned and licensed Beverly Hills Polo Club trade marks. They alleged that signs used by the defendants, Royal County of Berkshire Polo Club, infringed those marks in the United Kingdom, the European Union and several overseas territories. Claims were brought under sections 10(2) and 10(3) of the Trade Marks Act 1994, the corresponding EUTMR provisions, passing off, joint liability and unlawful-means conspiracy. The defendants counterclaimed for invalidity and the claimants sought revocation of certain defendant registrations.

The central issues were the proper date and context for assessment, the effect of a crowded market containing polo-themed brands, the significance of co-existence agreements and alleged actual confusion, and whether the marks created a likelihood of confusion or a relevant link.

1. Likelihood of confusion. The court applied the established global assessment, considering the average consumer, the goods, visual, aural and conceptual similarity, distinctive character, reputation, the crowded market and imperfect recollection. The goods were generally identical, but the average consumer had at least a medium level of attention because the goods carried a price premium and consumers were brand-aware.
2. The marks had low-to-medium visual and aural similarity and slightly more than medium conceptual similarity. The words “Beverly Hills” and “Royal County of Berkshire” were material elements and could not be disregarded. The horse-and-rider motifs were familiar generic references to polo and sport. They did not dominate either mark and did not retain an independent distinctive role.
3. The existence of other polo-themed brands was relevant to the distinctive character of the claimants’ mark, not as an impermissibly broad expansion of the context of the defendants’ use. In the relevant markets, consumers generally had to rely on the other branding and names to indicate origin. Co-existence agreements were relevant evidence of commercial circumstances, but their existence did not itself establish either conflict or absence of confusion.
4. The evidence of actual confusion was insubstantial. Mis-directions by mall staff, wrongly placed goods and unsupported reports of returns were principally administrative incidents and were not representative of purchasing consumers. The long period of concurrent trading without substantial documented confusion weighed against a likelihood of confusion.
5. There was no direct or indirect infringement in Panama, Mexico, Chile, Peru, the United Kingdom or the European Union. The circumstances did not cause consumers to view the defendants’ sign as a sub-brand or brand refresh. There was also no relevant link or injury under section 10(3) or article 9(1)(c), and the passing-off claim failed.
6. The agreed application of UK/EU trade mark law to the overseas infringement issues carried with it the application of UK principles of joint liability. Had infringement been established, the first defendant and its licensees would have been jointly liable on the basis of authorisation, with contingent findings against certain individual defendants and licensing agents.
7. The defendants’ conditional invalidity attacks failed because they stood or fell with the infringement allegations. Certain defendant registrations were revoked for non-use, while genuine small-scale use of other registrations was established. The claim was dismissed, subject to the revocation order.