Lifestyle Equities C.V. & Anr v Santa Monica Polo Club Ltd ("SMPC") & Ots* (Mr Recorder Douglas Campbell QC;  EWHC 3313 (Ch); 21.12.17)
Recorder Campbell (sitting as a judge of the High Court) held that two of SMPC's marks infringed Lifestyle's Beverly Hills Polo Club mark under Article 9(2)(b)/Section 10(2), and that all three of its signs infringed under Article 9(2)(c). A claim for passing off also succeeded in respect of all but the three-horse signs. A claim brought by one of the defendants for unjustified threats was dismissed.
Lifestyle was owner of a number of EU and UK registered trade marks, including for the following device:
Lifestyle and the exclusive licensee of the marks (the second defendant) claimed that the marks had been infringed by SMPC's dealings in goods bearing a number of logos, each of which contained the name "SANTA MONICA POLO CLUB" and a representation of at least one polo player, with a raised stick, on a pony, which was shown side on and running, a sample of which are shown below:
The Judge held that the one and two horse signs used by SMPC infringed Lifestyle's mark under Article 9(2)(b)/Section 5(1)(b). In respect of the two-horse signs, the Deputy Judge said that the fact that they were mirror images of each other went some way towards neutralising the visual impact of the difference between the signs and Lifestyle's mark. Further, Lifestyle's use of its mark had been substantial up to 2012. In respect of SMPC's three-horse signs, the Judge was of the view that the overall impression was different such that there was no likelihood of confusion. Lifestyle's claim for passing off succeeded to the same extent, i.e. not for the three-horse signs but for the other signs.
The Judge went on to find that each of SMPC's one, two, and three-horse signs infringed Lifestyle's mark under Article 9(2)(c). In respect of the three-horse signs, even though there was no likelihood of confusion, the Judge considered that the average consumer would make a link with Lifestyle's mark so as to give SMPC an unfair advantage. This was particularly because Lifestyle's mark was very well-known for clothing at the relevant date and occupied a premium position in the market.
Finally, a counterclaim by the eleventh of the twelve defendants for unjustified threats was rejected. It was a wholesaler of the infringing goods which it had sold to the retailer TK Maxx and claimed that it had been aggrieved by unjustified threats made by Lifestyle to TK Maxx. The Judge agreed with Arnold J in Samuel Smith Old Brewery (Tadcaster) v Lee (t/a Crompton Brewery)  EWHC 1879 (Ch) that a threat to join someone into existing proceedings was just as actionable as a threat to issue proceedings against that person. However, as all the goods had been found to infringe, it followed that there was a defence of justification.