• The High Court considered “how insubstantial the supposed evidence of confusion” was between the brands
• The claimants’ evidence of alleged confusion failed to establish that there had been any significant confusion or that any confusion was caused by the defendants’ logo
• The claimants’ approach to litigation had been as “oppressive as possible and not proportionate”

Background

This case is one of a number brought recently by Lifestyle Equities, owner of the BEVERLY HILLS POLO CLUB marks. The claimants argued a likelihood of confusion in various territories between their mark BEVERLY HILLS POLO CLUB and the sign ROYAL COUNTY OF BERKSHIRE POLO CLUB.

In a recent judgment handed down on 19 July 2023 (Lifestyle Equities CV v Royal County of Berkshire Polo Club Ltd ([2023] EWHC 1839 (Ch)), Mr Justice Mellor held that the claimants’ evidence of alleged confusion failed to establish that there had been any significant confusion or that any confusion was caused by the defendants’ logo. He also found there to be “a number of problems with the evidence put before the court” by the claimants. Consequently, both the trademark infringement and passing-off claims were dismissed. The judge also dismissed the claim for conspiracy to injure by unlawful means, which he said added nothing to the claimants’ case, given the unlawful means relied upon were the alleged acts of trademark infringement and passing off.

Trademark infringement and passing off

The claimants argued that the defendants’ sign infringed their trademark under Sections 10(2) and 10(3) of the Trademarks Act 1994 (and equivalent EU legislation) and amounted to passing off. The claimants’ Section 10(3) claim was limited to dilution of distinctive character only.

As the claimants sought resolution of infringement occurring in the United Kingdom, European Union, Chile, Panama, Peru, Mexico and the United Arab Emirates, the parties agreed to apply UK and EU law to all territories and that the decision of the High Court would bind the parties in all jurisdictions in dispute, although this was not specified in the case.

Confusion

The judge noted that the market for polo-themed clothing is crowded and that there are several brands using logos depicting mounted polo players. The judge found that there could be no distinctiveness in the claimants’ horse and rider motif or the words ‘Polo Club’ because these elements have been used in the market by other brands. He concluded that, in such a market, the names of the brands must be the primary distinction between them.

He rejected the claimants’ arguments for direct confusion given there was a total lack of evidence of confusion, or its likelihood, in any jurisdiction, despite the brands having co-existed for significant periods of time in certain jurisdictions. The judge was also critical of the claimants’ evidence, aspects of which he found to be “materially misleading and untrue” and presented with “exaggeration… as to the scale and reach of the [BEVERLY HILLS POLO CLUB] brand”.

The judge also rejected the claimants’ arguments for indirect confusion because “the crowded market along with the elements in the mark and the sign militate against anyone viewing the sign as a sub-brand or as a brand refresh”. 

Dilution and passing off

The claimants’ claim for dilution of a mark with a reputation was also rejected. While the judge acknowledged that the claimants’ mark had some reputation for certain goods in Italy, Spain and the United Kingdom, he found that:

the average consumer would make no link between the mark and the sign… At best, a consumer might wonder whether there was a connection and conclude not due to the differences between the mark and the sign. ”

Passing off also failed.

Comment

The judge considered that the claimants’ evidence had not been prepared in the spirit of the rules on evidence and noted that the claimants’ approach to litigation had been as “oppressive as possible and not proportionate”. The judgment may be subject to appeal given how active the claimants have been in enforcing their trademark rights; however, considering the lengthy findings in relation to the evidence and the fact-specific nature of the findings of confusion, it will be interesting to see whether any appeal is successful.

This article first appeared in WTR Daily, part of World Trademark Review, in August 2023. For further information, please go to www.worldtrademarkreview.com.