Clash of Feathers for Jack Wills and House of Fraser

On Friday 31 January 2014, House of Fraser lost its trade mark dispute with Jack Wills over the use of logos on its ‘Linea’ brand of casual clothing. The Jack Wills logo in question comprises a silhouetted side profile of a pheasant wearing a top hat and holding a cane. The judge held that the use of House of Fraser’s own logo, a silhouetted side profile of a pigeon wearing a top hat, was an infringement of Jack Wills’ registered UK and Community trade marks.

To successfully protect its trade mark and prove infringement, Jack Wills had to prove the satisfaction of six conditions under Article 5(1)(b) of the European Parliament and Council Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks (the ‘Directive’):

• there must be use of a sign by a third party within the relevant territory;
• the use must be in the course of trade;
• it must be without the consent of the proprietor of the trade mark;
• it must be of a sign which is similar to the trade mark;
• it must be in relation to goods or services which are similar to those for which the trade mark is registered; and
• it must give rise to a likelihood of confusion on the part of the public.

The judge, Mr Justice Arnold, had to decide whether House of Fraser’s use of its pigeon logo was an infringement of Jack Wills’ trade mark rights. In considering the infringement of a registered trade mark, he acknowledged that a claim for passing off ‘stands or falls’ in line with the Article 5(1)(b) criteria so made no further references to passing off in his judgment. Mr Justice Arnold made the following observations:

• in deciding whether there was likely to be confusion, the average consumer varied “in age and socio-economic class”;
• the Jack Wills logo had acquired distinctiveness to a proportion of this class of people, which would increase confusion, although the average consumer class must be looked at as a whole;
• the court could consider the objective effect of the use of a similar sign (i.e. reputation and goodwill), not only the subjective intention to exploit the logo; and
• positive evidence was not required to show economic activity of consumers was affected, logical deductions could be made.

This judgment clarified several aspects of trade mark infringement case law. Mr Justice Arnold took the opportunity to articulate the characteristics of unfair advantage and moved away from previous case law, which focused on the intentions of the defendant, towards the objective effect of the trade mark’s use (i.e. that the trade mark is used to take unfair advantage of the previous well-known mark).  The judge also revisited the concept of the ‘average consumer’ in relation to confusion, as he did in the 2013 case of Interflora Inc v Marks & Spencer plc. He held that the average consumer must still be viewed as a whole (in this case a consumer of clothing), despite the differing demographic of consumers for the brands in question. On that basis, the judge rejected House of Fraser’s submission that the ‘average consumer’ was ‘a 16-24 Jack Wills devotee’. This reaffirmed the clear message that the definition of ‘average consumer’ is broad when considering a likelihood of confusion.

As Jack Wills had registered the logo in dispute as a trade mark, it could rely on the Directive and did not have to fulfil the higher evidential burden required for a passing off claim.

The three requirements of the ‘classical trinity’ test for passing off, as set out in the ‘Jif Lemon’ case Reckitt & Colman Products Ltd v Borden Inc., are as follows

• goodwill or reputation attached to the goods or services;
• misrepresentation by the defendant likely to lead to confusion of the public; and
• damage to the claimant as a result of the defendant’s misrepresentation.

To fulfil this test, claimants seeking to rely on passing off must first prove ownership and a significant established goodwill in the unregistered trade mark which members of the public associate with the owner’s business. In contrast, for registered trade marks, only a likelihood of confusion must be proven, the first two limbs of the ‘classical trinity’ test fall away.

The requirements for passing off place a heavier burden on the owners of unregistered trade marks and therefore this is an incentive for manufacturers and retailers to use registered trade marks to protect their intellectual property rights. Although not discussed in the judgment, it would have been interesting to see whether Jack Wills would have been able to make against House of Fraser.

Trade mark protection is a key consideration for manufacturers and retailers and should always be investigated. Preventative measures, such as trade mark searching and raising brand awareness, should be considered to strengthen a business’ position. We would recommend all businesses, large and small, remain vigilant to competitors’ activities and always seek advice at an early stage.

For further information on the issues raised in this article, please contact Tim Richards, Partner at tim.richards@michelmores.com or Associate David Thompson at david.thompson@michelmores.com.