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England and Wales High Court (Chancery Division) Decisions |
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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Jack Wills Ltd v House of Fraser (Stores) Ltd [2014] EWHC 110 (Ch) (31 January 2014) URL: http://www.bailii.org/ew/cases/EWHC/Ch/2014/110.html Cite as: [2014] EWHC 110 (Ch), [2014] FSR 39 |
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CHANCERY DIVISION
Fetter Lane, London, EC4A 1NL |
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B e f o r e :
____________________
| JACK WILLS LIMITED |
Claimant |
|
| - and - |
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| HOUSE OF FRASER (STORES) LIMITED |
Defendant |
____________________
Michael Bloch QC and Tom Cleaver (instructed by Lewis Silkin) for the Defendant
Hearing dates: 20-21 January 2014
____________________
Crown Copyright ©
MR JUSTICE ARNOLD :
Contents
| Topic | Paragraphs |
| Introduction | 1-4 |
| The Logos | 5-10 |
| The Trade Marks | 11 |
| The witnesses | 12-14 |
| Factual background | 15-51 |
| Jack Wills | 15-24 |
| The Mr Wills Logo | 25-27 |
| House of Fraser | 28-29 |
| Linea | 30-31 |
| The Pigeon Logo | 32-45 |
| Use of the Pigeon Logo | 46-47 |
| The genesis of the dispute | 48 |
| Other bird logos | 49-51 |
| The law | 52-84 |
| The key provisions of the Directive and the Regulation | 52-53 |
| Article 5(1)(b) of Directive/Article 9(1)(b) of the Regulation | 54-68 |
| Article 5(2) of the Directive/Article 9(1)(c) of the Regulation | 69-84 |
| Assessment | 85-110 |
| Article 5(1)(b) of the Directive/Article 9(1)(b) of the Regulation | 85-103 |
| The average consumer | 85-86 |
| Distinctiveness of the Trade Marks | 87-90 |
| Comparison between the Trade Marks and the Pigeon Logo | 91-95 |
| Comparison between the respective goods | 96 |
| Context of use | 97-98 |
| No evidence of actual confusion | 99-102 |
| Conclusion | 103 |
| Article 5(2) of the Directive/Article 9(1)(c) of the Regulation | 104-110 |
| Did the Trade Marks have a reputation in November 2011? | 107 |
| Was there a link? | 108 |
| Did use of the Pigeon Logo take unfair advantage of the | 109-110 |
| reputation of the Trade Marks? | |
| Conclusion | 111 |
Introduction
The Logos
This version is mainly used on carrier bags. It is usually printed in white on a navy background.
This version is used on swing tickets on almost all Jack Wills products. The exceptions are denim products prior to the Autumn/Winter 2013 season, leggings and jewellery (as to which, see below). It is also used on the majority of Jack Wills' promotional materials, and in particular its handbooks (catalogues). It is also used on the reverse of care labels in clothing. It is most commonly printed in cream on a navy background, but sometimes it is printed in navy on a white background or in white on a coloured background.
This version is embroidered on the exterior of many items of clothing, in particular on the left breast of shirts, sweaters and similar garments. In some cases, it appears in a different position, such as on left front tail of rugby shirts and long-sleeved tee-shirts, on the left leg of boxer shorts and on the ankle of socks. It is also embroidered on the reverse of the size label in all Jack Wills clothing. This version is also used in a variety of other ways: it was used on the swing tickets for denim products until the Autumn/Winter 2013 season; it is used on a metal disc attached to jewellery; it is used on header cards or belly bands for leggings; it is used multiple times on the linings of some suits and jackets; it is used as the website identifier. When embroidered on clothing, the logo is used in a range of different colours. When used in other ways, it is usually printed in navy on cream, in black on white or in white on a coloured background.
This version was printed in dark grey on a cream background.
The Trade Marks
The witnesses
Factual background
Jack Wills
The Mr Wills Logo
House of Fraser
Linea
The Pigeon Logo
"The collection forms the core identity of the Linea brand producing key items that become staples in any gentlemen's wardrobe.
The trend of Modern Gentry is formed by the middle class man embracing the true foundations of menswear, it's a collaboration between classic silhouettes, quirky styling and hidden authentic detailing and trim.
…
* Core garments include a causal blazer, fair isle knitwear, combined with traditional gingham and stripe shirtings.
* Shirt styling is inspired by vintage dress detailing, trims and handmade branding.
…"
"For int pocket bag prints –
1 colour print
Within 15(h)x10(w)cm
May be used for branding on shirts etc"
Use of the Pigeon Logo
The genesis of the dispute
Other bird logos
i) Lyle & Scott - an eagle with outstretched wings;
ii) American Eagle - another eagle with outstretched wings;
iii) Emporio Armani - an eagle looking to the right;
iv) Hollister - a flying seagull; and
v) Original Penguin - a standing penguin.
The law
The key provisions of the Directive and the Regulation
"Article 5
Rights conferred by a trade mark
1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
…
(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark.
2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."
Article 5(1)(b) of the Directive/Article 9(1)(b) of the Regulation
"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion."
"36. Furthermore, according to the case-law of the Court, the more distinctive the trade mark, the greater the likelihood of confusion. Therefore, trade marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than trade marks with a less distinctive character (Case C-39/97 Canon [1998] ECR I-5507, paragraph 18).
37. At the very least where there is a trade mark which is registered not in a particular colour or characteristic, but in black and white, the colour or combination of colours in which the trade mark is later used affects how the average consumer of the goods at issue perceives that trade mark, and it is, therefore, liable to increase the likelihood of confusion or association between the earlier trade mark and the sign alleged to infringe it.
38. In those circumstances, it would not be logical to consider that the fact that a third party, for the representation of a sign which is alleged to infringe an earlier Community trade mark, uses a colour or combination of colours which has become associated, in the mind of a significant portion of the public, with that earlier trade mark by the use which has been made of it by its proprietor in that colour or combination of colours, cannot be taken into consideration in the global assessment for the sole reason that that earlier trade mark was registered in black and white."
Article 5(2) of the Directive/Article 9(1)(c) of the Regulation
"24. The public amongst which the earlier trade mark must have acquired a reputation is that concerned by that trade mark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, for example traders in a specific sector.
25. It cannot be inferred from either the letter or the spirit of Article 5(2) of the Directive that the trade mark must be known by a given percentage of the public so defined.
26. The degree of knowledge required must be considered to be reached when the earlier mark is known by a significant part of the public concerned by the products or services covered by that trade mark.
27. In examining whether this condition is fulfilled, the national court must take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it."
"As regards the concept of 'taking unfair advantage of the distinctive character or the repute of the trade mark', also referred to as 'parasitism' or 'free-riding', that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation."
"44. In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark's reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. As regards the strength of the reputation and the degree of distinctive character of the mark, the Court has already held that, the stronger that mark's distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. It is also clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to them (see, to that effect, Intel Corporation, paragraphs 67 to 69).
45. In addition, it must be stated that any such global assessment may also take into account, where necessary, the fact that there is a likelihood of dilution or tarnishment of the mark.
46. In the present case, it is a matter of agreement that Malaika and Starion use packaging and bottles similar to the marks with a reputation registered by L'Oréal and Others in order to market perfumes which constitute 'downmarket' imitations of the luxury fragrances for which those marks are registered and used.
47. In that regard, the referring court has held that there is a link between certain packaging used by Malaika and Starion, on the one hand, and certain marks relating to packaging and bottles belonging to L'Oréal and Others, on the other. In addition, it is apparent from the order for reference that that link confers a commercial advantage on the defendants in the main proceedings. It is also apparent from the order for reference that the similarity between those marks and the products marketed by Malaika and Starion was created intentionally in order to create an association in the mind of the public between fine fragrances and their imitations, with the aim of facilitating the marketing of those imitations.
48. In the general assessment which the referring court will have to undertake in order to determine whether, in those circumstances, it can be held that unfair advantage is being taken of the distinctive character or the repute of the mark, that court will, in particular, have to take account of the fact that the use of packaging and bottles similar to those of the fragrances that are being imitated is intended to take advantage, for promotional purposes, of the distinctive character and the repute of the marks under which those fragrances are marketed.
49. In that regard, where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark.
50. In the light of the above, the answer to the fifth question is that Article 5(2) of Directive 89/104 must be interpreted as meaning that the taking of unfair advantage of the distinctive character or the repute of a mark, within the meaning of that provision, does not require that there be a likelihood of confusion or a likelihood of detriment to the distinctive character or the repute of the mark or, more generally, to its proprietor. The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of the mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark's image."
"112. Thus, the issue raised by Jacob L.J. at para.91 of his judgment in L'Oréal v Bellure, which led him to pose the fifth of the referred questions, has been answered, in essence, to the effect that an advantage obtained by the third party from the use of a similar sign, which is neither confusing nor otherwise damaging, is unfair if the advantage is obtained intentionally in order to benefit from the power of attraction, the reputation and the prestige of the mark and to exploit the marketing effort expended by the proprietor of the mark without making any such efforts of his own, and without compensation for any loss caused to the proprietor, or for the benefit gained by the third party.
….
136. … It is not sufficient to show (even if Whirlpool could) that Kenwood has obtained an advantage. There must be an added factor of some kind for that advantage to be categorised as unfair. It may be that, in a case in which advantage can be proved, the unfairness of that advantage can be demonstrated by something other than intention, which was what was shown in L'Oréal v Bellure. No additional factor has been identified in this case other than intention.
137. The question of unfair advantage has to be considered in the round, using a global assessment as indicated in Intel in para.79 of the Court's judgment. As Advocate General Sharpston said at para.65 of her Opinion in Intel, unfair advantage is the more likely to be found if the mark is more distinctive and if the goods or services are more similar. … The Court in L'Oréal v Bellure also referred to the importance of the strength of the reputation of the mark, and the strength of the reminder, reiterating what had been said in Intel. …"
"So far as I can see this is saying if there is 'clear exploitation on the coat-tails' that is ipso facto not only an advantage but an unfair one at that. In short, the provision should be read as though the word 'unfair' was simply not there. No line between 'permissible free riding' and 'impermissible free riding' is to be drawn. All freeriding is 'unfair.' It is a conclusion high in moral content (the thought is clearly that copyists, even of lawful products should be condemned) rather than on economic content."
"127. The Court may reasonably be thought to have declared, in substance, that an advantage gained by a trader from the use of a sign which is similar to a mark with a reputation will be unfair where the sign has been adopted in an attempt to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, and without making efforts of his own, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark's image….
128. But plainly there are limits to this broad principle…."
"42. Admittedly, Regulation No 207/2009 and the Court's case-law do not require evidence to be adduced of actual detriment, but also admit the serious risk of such detriment, allowing the use of logical deductions.
43. None the less, such deductions must not be the result of mere suppositions but, as the General Court itself noted at paragraph 52 of the judgment under appeal, in citing an earlier judgment of the General Court, must be founded on 'an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case'."
Assessment
Article 5(1)(b) of the Directive/Article 9(1)(b) of the Regulation
Article 5(2) of the Directive/Article 9(1)(c) of the Regulation
Conclusion
Annex
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