Jack Wills' top-hatted pheasant logo, which is registered as a UK and Community trade mark for clothing, has been held infringed by a logo comprising a pigeon wearing a top hat and bow tie used by House of Fraser.  Mr Justice Arnold concluded that there was a likelihood of confusion between the logos for reasons including the identity of the goods in question, the distinctive character of Jack Wills' logo and the similarity between the logos.  Further, House of Fraser had taken unfair advantage of the reputation of Jack Wills' trade marks.  Key to the decision was the anthropomorphic nature of Jack Wills' logo – a unique feature on a market in which the use of birds as logos is not, in itself, unusual (Jack Wills Limited v House of Fraser (Stores) Limited [2014] EWHC 110 (Ch), 31 January 2014).

The judgment included a number of points of interest: 

  • Identity of the average consumer: Arnold J examined the concept of the "average consumer" and, in particular, who the average consumer is when the parties are targeting different markets, even though the goods are identical.  Arnold J held that the average consumer included young people within Jack Wills' core target market, but also older people, including those who bought clothes as gifts for others.  However, just because the persons represented by the average consumer may purchase goods or services on their own behalf, or for others, it did not follow that there were two different average consumers.  He noted that the persons represented by the average consumer may vary widely in age and socio-economic class, and it would be rare for a trade mark to have the same distinctive character to all persons of whom the average consumer is representative – some will know it well and others will be ignorant of it.
  • Unfair advantage - relevance of intention: Arnold J held that the court should not only consider the subjective intention of a competitor in using the sign, but also the objective effect that the competitor would benefit from the reputation and goodwill in the claimant's mark.  This objective effect could amount to unfair advantage even if there is no evidence that there was a subjective intention to exploit that reputation and goodwill.
  • "Sailing close to the wind" re competitors' marks: Arnold J considered that it was a legitimate inference in the circumstances that, due to its resemblance to the trade marks, the effect of House of Fraser's use of its pigeon logo will have been to cause a "subtle but insidious" transfer of image from the trade marks to the pigeon logo in the minds of some consumers, whether that was House of Fraser's intention or not.  As such, it would have increased the attraction of House of Fraser's goods, where it did not undertake any advertising or promotion and, as a result, take unfair advantage of the trade marks.

Business Impact

Although it is relatively common practice for retailers to seek to enhance the attraction of their own-brand products by adopting an aspect of the get-up of prestigious brands (as Arnold J recognised), it is clear that adopting a logo which features elements of an established brand is a risky strategy - however subtle these may be and whether intended or not.  This risk will be increased where the chosen aspect is unusual in the market concerned.  In the case of Jack Wills, House of Fraser's pigeon logo sailed too close to the wind.