Jack Wills, a brand which prides itself on being ‘Fabulously British’, owns a trade mark for its logo which is used to embellish many items within its clothing range. The pheasant, known affectionately as ‘Mr Wills’, consists of the outline of a pheasant wearing a top hat and holding a cane.
Jack Wills issued a claim against House of Fraser and more particularly its LINEA brand, because between November 2011 and February 2013, LINEA used the silhouette of a pigeon wearing a top hat and bow tie to embellish a range of items it produced.
It is common for brands to use an embellishment on the left breast (or elsewhere) on their garments to represent their brand and there are many other clothing brands which use birds in their branding (for example American Eagle, Emporio Armani and Original Penguin). However, Jack Wills felt that House of Fraser’s pigeon displayed sufficient similarity to its Mr Wills logo to amount to trade mark infringement.
House of Fraser denied that it had infringed Jack Wills’ trade mark. It claimed that the pigeon logo was not created to represent the brand as a whole and that it 'was created to embellish some items in the range'.
The court found that House of Fraser had infringed Jack Wills’ trade mark, on the basis that the average consumer would be confused between the two brands, even though the two logos were not identical.
WHY THIS MATTERS
- The court took a look at the ‘average consumer’ and decided that it is a range of consumers, not just those that shopped in House of Fraser or in Jack Wills. The average consumer could vary in age and socio-economic circumstances. This means that trade marks owners have a wider definition when alleging trade mark infringement, as even if consumers of the two products are different, both may be taken into account when looking at whether the average consumer will be confused.
- It was not just the logo but the associated ‘slogans’ which were used by House of Fraser which became part of its downfall. It used terms such as ‘Modern Gentry,’ which was too similar to Jack Wills’ slogans, such as ‘Outfitters to the Gentry.’ Retailers need to be very careful when choosing slogans, as they can help create an association with another brand, even when the wording is different. Jack Wills was of the opinion that House of Fraser was trying to mimic its 'lifestyle' ie its footprint.
- The court highlighted that there is no need to prove actual detriment. The court can make logical deductions. There needs to be more than mere suppositions put forward by the brand owner, but actual evidence of a change in economic activity is not required. This makes it easier for the trade mark owner to win in court, as although there is still an evidential burden for the claimant, it is lower than previously thought.
WHAT THIS MEANS FOR RETAILERS
- Always consider the originality of logos – are you trying to ride on the coat tails of another brand? If so, you are going to be sailing close to the wind.
- Think about associated branding ie slogans. Just because the wording is different does not mean that you will escape an infringement claim. Consider what you are trying to achieve.
- The concept of 'average consumer' is wider than previously thought. Just because your consumer may not know of the original brand does not mean that they will be excluded from the definition.