Jack Wills v House of Fraser trade mark infringement

Posted by Jill Bainbridge on
Jack Wills Ltd, the Claimant, was a clothing retailer founded in 1999. It sold its own brand of mainly casual clothing through stores in the UK targeting affluent students.

Its core market was 16-24 year olds but it also sold to consumers who were both younger and older than its core target market.

Jack Wills used a logo consisting of a silhouette of a pheasant with a top hat and a cane. The logo, which was referred to anthropomorphically as "Mr Wills", was registered as both a UK mark and a CTM for clothing. The logo was embroidered on the exterior of many items of clothing, in particular on the left breast of shirts, sweaters and other similar garments.

House of Fraser, the Defendant, was a department store which sold well known brands in addition to its own brand of clothing under the brand name "Linea". Between November 2011 and February 2013 it used a logo consisting of a silhouette of a pigeon with a top hat and bow-tie on a selection of Linea garments.

The logo was embroidered on the exterior of many items of clothing, in particular on the left breast of shirts, sweaters and other similar garments.

In October 2012 Jack Wills discovered garments bearing the pigeon logo in a House of Fraser Store and commenced proceedings for trade mark infringement and passing off against House of Fraser.

High Court Ruling

Arnold J (the Judge) concluded that there was a likelihood of confusion between the two logos and that House of Fraser had taken an unfair advantage of the reputation of the Jack Wills trade marks.

In reaching his decision, Arnold J looked in particular at the concept of the "average consumer" in cases where the parties are targeting different markets and provided some guidance on the role of the defendant's intentions in establishing "unfair advantage".

Average consumer

The average consumer was considered to be a consumer of men's clothing, and particularly men's casual clothing, who would exercise a moderate degree of attention to trade marks. Arnold J emphasised that the average consumer was a legal construct and it was not necessarily for the court to assume that all the consumers of whom the average consumer was representative perceived the trade mark in the same way.

The Judge explained that the persons represented by the average consumer could vary widely in age and socio-economic class. If a trade mark had acquired distinctive character amongst one demographic segment of the relevant class of persons, that was a relevant factor in assessing the likelihood of confusion amongst that segment, but it would rarely be appropriate to treat the average consumer as representative solely of that segment.

Arnold J considered that the Mr Wills logo had a substantial degree of inherent distinctive character. This took into account the anthropomorphic aspect, and in particular the fact that the bird is equipped with accessories associated with an English gentleman.

Notwithstanding the lack of market research, Arnold J took the view that the Mr Wills logo had acquired additional distinctive character through use. Comparing the marks, they had a reasonable degree of visual similarity and a high degree of conceptual similarity.

Arnold J considered that there was a likelihood of confusion echoing the decision in Aveda Corporation v Dabur India Ltd [2013] EWHC 589 that the human eye has a tendency to see what it expects to see.

The fact that there were no examples of actual confusion was not a fatal ground.

Unfair advantage

Arnold J considered that Jack Wills had a sufficient reputation in its Mr Wills logo as at November 2011, and that there was a sufficient link between the Pigeon logo and Mr Wills.

Taking into account his finding that House of Fraser intended the Pigeon logo to have brand significance, and the clear intention to use the Pigeon logo in order to make the garments more attractive to consumers, Arnold J considered that this was “a classic case of a retailer seeking to enhance the attraction of its own brand goods by adopting an aspect of the get-up of prestigious branded goods, in this case an embroidered logo of the kind used by Fred Perry, Lacoste, Polo Ralph Lauren and others.

Thus House of Fraser was seeking to influence the economic behaviour of consumers of Linea menswear. I see no reason to think it will not have succeeded in that endeavour”.

Arnold J went on to find that the effect of the Pigeon logo “will have been to cause a subtle but insidious transfer of image” from Mr Wills to the Pigeon logo in the minds of some consumers, regardless of House of Fraser’s intentions.

House of Fraser had no justification for this conduct, and it was held that the use of the Pigeon logo took unfair advantage of Jack Wills’ reputation in Mr Wills.

Comment

This case is an example of a defendant sailing too close to the wind of an established brand. It underscores the value of registering logos as trade marks, and provides additional support for the proposition that such signs can and do automatically function as brands in the eyes of consumers.

Brand owners can take comfort that the UK Courts take a fairly strong approach to such "look-a-like" products, even when there is no evidence of actual confusion.

As for House of Fraser? unfortunately they'll need to go back to the drawing board to rebrand the Linea range, this time without a pigeon!

About the Author

Heading up the firm’s Intellectual property group and Trade Mark prosecution team, Jill specialises in IP and IT disputes. She also heads the Commercial Litigation teams in Wales and the South.

Jill Bainbridge
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