Lifestyle Equities CV & Ors v Royal County of Berkshire Polo Club Limited & Ors

Likelihood of confusion under section 10(2) of the Trade Marks Act 1994 requires a global assessment from the perspective of the average consumer. Third-party use of similar signs may reduce a mark’s distinctive character and narrow its protection; a crowded market need not be confined to descriptive or allusive marks. The sign must also be assessed in the actual context of its use, although the wider limits of that principle were left open. Coexistence agreements cannot determine whether the public is likely to be confused, but their market effects and evidential insight may be relevant. An appellate court should not interfere with a multifactorial assessment absent an error of law or principle.

The claimants appealed from Mellor J’s dismissal of their claims for trade mark infringement and passing off. The appeal concerned signs used for goods identical to those covered by the claimants’ marks, principally clothing. The principal issues were whether the judge had wrongly relied on third-party polo-themed brands as evidence of a crowded market, whether coexistence agreements were relevant to likelihood of confusion, and, conditionally, whether post-sale confusion could establish infringement. The High Court decision is identified in the cover sheet as [2023] EWHC 1839 (Ch). The Court of Appeal was required to determine whether the judge had made an error of law or principle in dismissing the claims.

Disposition. The appeal was dismissed. Arnold LJ gave the judgment, with Nugee LJ and Baker LJ agreeing.

1. Standard of review. The judge’s conclusion involved a multifactorial evaluation. The Court could intervene only for an error of law or principle. The judge’s careful assessment disclosed no such error.
2. Crowded market and distinctive character. The more distinctive an earlier mark, the greater the likelihood of confusion and the broader its protection. The converse also applies. Third-party use of similar signs may diminish a mark’s distinctiveness, even where the common element is not descriptive or allusive. In a crowded market, it is harder for one mark to stand out. The reasoning in Levi Strauss concerned the defendant’s own unlawful use and did not require third-party use of other signs to be discounted. The judge was entitled to assess the evidence in the minds of average consumers as a whole. The defendants did not bear a burden to prove that no significant proportion of the public was unaware of the third-party brands.
3. Context of use. Under the Trade Marks Act 1994 and corresponding EU provisions, the allegedly infringing sign must be considered in the context in which it is actually used. The question whether that context extends beyond the immediate circumstances of use was difficult and was left for a case in which it mattered. It did not matter here because the crowded market was relevant to distinctive character independently of the scope of context.
4. Coexistence agreements. Such agreements cannot determine whether the public is likely to be confused. However, their effects on the market may be relevant, and they may cautiously provide insight into what market participants regard as distinguishable. The judge treated the agreements as non-determinative and did not rely on them in his final global assessment. His approach was lawful.
5. Post-sale confusion. Ground 2 was conditional and did not arise. Arnold LJ nevertheless observed that, where the signs were not confusingly similar at the point of sale, he could not see how post-sale confusion could arise on the facts. This was not a case in which confusion at the point of sale had been negatived only by extraneous contextual factors.

1. Court of Appeal (Civil Division): [2024] EWCA Civ 814. Appeal dismissed.
2. High Court, Chancery Division: Mellor J dismissed the claims for trade mark infringement and passing off, by order dated 3 November 2023 and judgment dated 19 July 2023, identified in the cover sheet as [2023] EWHC 1839 (Ch).