Well-known retail brand Jack Wills has successfully relied on its community trade mark of a pheasant (below and left) in infringement proceedings against House of Fraser's use of a pigeon logo (below and right).
The "Pheasant Mark" The "Pigeon Sign"
This case is a useful reminder of how the conceptual similarities between marks, in spite of obvious visual differences, can lead to a finding of infringement. Arnold J's positive findings on likelihood of confusion and unfair advantage were particularly interesting given the lack of evidence adduced by either party. It demonstrates that the courts are very willing to reach independent findings of fact on these issues based on judge lead deduction.
The facts of the case were straightforward and broadly not contested by the parties. Jack Wills' Pheasant Mark was registered in class 25 (amongst others) and House of Fraser's use of the Pigeon Sign post-dated the relevant registration(s). Jack Wills sought a finding of infringement under both Art. 5(1)(b) and Art. 5(2) of Council Directive 2008/95/EC (respectively, use of a confusingly similar mark, and taking unfair advantage of a mark).
Art. 5(1)(b) (confusingly similar mark)
Applying the standard tests, Arnold J had no difficulty in finding that the Pigeon Sign was used by House of Fraser in the course of trade without the consent of Jack Wills. It was also not contested that the Pigeon Sign and the Pheasant Mark were used on similar (indeed identical) goods. The two questions that arose therefore were the similarity of the marks and the likelihood of confusion.
Similarity of the marks. House of Fraser's primary arguments were simply that the birds in question were different species and that there were some obvious visual differences between the marks – namely the bow tie, cane and the logo's orientation. To the extent that Jack Wills cited visual similarities, namely the fact that both signs were of birds, with a similar posture and profile, House of Fraser applied a classic squeeze argument stating that those similarities were borne out of a lack of distinctiveness.
House of Fraser pointed to several other "bird brands" such as Hollister and Penguin as well as the lesser known bird used by Modern Amusement.
Arnold J was in the end, persuaded by the conceptual similarities. Left unconvinced by House of Fraser's position that the Pigeon Sign was a symbol of working class London, Arnold J noted that both the Pigeon Sign and the Pheasant Mark bore "accoutrements of an English Gentlemen". Not only was that observation determinative of conceptual similarity, but it took care of all of House of Fraser's arguments that the Pheasant Trade Mark was not distinctive – ie none of the birds cited by House of Fraser wore any accoutrements at all.
Likelihood of confusion. Jack Wills, having established that the Pheasant Mark was inherently distinctive also sought to establish enhanced distinctiveness (therefore increasingly the likelihood of confusion). House of Fraser observed that little or no evidence was adduced by Jack Wills in support of its submission, but Arnold J was persuaded that through sheer use (3 million units sold over 4 years), the Pheasant Mark must have enhanced distinctiveness and that such distinctiveness increased the likelihood of confusion.
No evidence of actual confusion was provided by Jack Wills, but Arnold J reiterated that no actual evidence of confusion is necessary and held that in fact there was a strong likelihood in this instance that any confusion could go undetected. Consumers might purchase House of Fraser products thinking it was Jack Wills, but not complain – both products would have been well manufactured and from well-regarded high street stores. In the end, Arnold J held that there must be a likelihood of confusion because of, in particular, the conceptual similarity of the mark and the sign and the acquired distinctiveness of the Pheasant Mark.
Art. 5 (2) (unfair advantage)
Once again, several limbs of the unfair advantage (5(2)) test were unchallenged. However, in brief, Arnold J was satisfied that Jack Wills had a significant repute in the UK (and such a repute within one member state would suffice for Community purposes). Arnold J had already held that the Pheasant Mark and Pigeon Sign were sufficiently similar and was also satisfied, in light of his finding of conceptual similarity, that the Pigeon Sign would "call the trade mark to mind for the average consumer, who is reasonably well informed and reasonably observant and circumspect".
Of the three "limbs" of damage possible under 5(2): (i) detriment to distinctive character of the mark; (ii) detriment to reputation of the mark; or (iii) the taking of unfair advantage of the mark, Jack Wills pursued the unfair advantage limb only.
House of Fraser argued that, in order to establish unfair advantage, it was necessary for Jack Wills to show evidence that the economic behaviour of House of Fraser's consumers was actually altered by House of Fraser's use of the Pigeon Sign. Arnold J rejected that submission, following the decision in Case C-383/12 Environmental Manufacturing LLP v OHIM that logical deductions about the unfair advantage gained by a Defendant were permissible, provided that those deductions were in fact logical and not "mere supposition".
Arnold J concluded that "the effect of House of Fraser's use of the Pigeon Logo will have been to cause a subtle but insidious transfer of image from the Trade Marks to the Pigeon Logo (and hence from Jack Wills goods to House of Fraser's goods) in the minds of some consumers, whether that was House of Fraser's intention or not." That conclusion was based on deductions made by Arnold J in relation to the retail clothing market and the attraction of consumers towards prestigious brands. Consequently, Jack Wills was also successful in proving infringement under Art. 5(2).
It may be that Arnold J was unconvinced that the Pigeon Sign was conceived independently from the Pheasant Mark and so, the benefit of the doubt was always more likely to be exercised in Jack Wills' favour.
Ultimately the conceptual similarity between the Pheasant Mark and the Pigeon Sign was fatal for House of Fraser showing that conceptual similarity can be sufficient to override obvious visual differences between a trade mark and allegedly infringing signs. That approach may be considered particularly relevant in the retail world (especially towards the higher-end). Visual similarities in these types of cases may be less important considering that current trends lean towards branding on higher end products tending to be small and unobtrusive (e.g. a small piece of embroidery on the left breast - as in this case).
What the case also demonstrates is that Judges are more than happy to draw their own deductions on outcomes from their own experience when it comes to findings of likelihood of confusion or whether a party has obtained an unfair advantage - even where neither party adduces any evidence on that point at trial.
Judges plainly see high street retail as an area on which they are well qualified to comment. Whether in this specific context or, for example, as a consequence of laying down much stricter guidelines on parties' use of survey evidence and experts, it's becoming increasingly common to see Judges relying on their own findings and placing less weight on evidence.