Does use of a trade mark within the UK constitute valid use within the EU to evidence enhanced distinctiveness of an EU trade mark?
The judgement of the Shopify vs Shoppi case has important implications for UK trade mark owners.
In a recent High Court decision, Mr Justice Arnold ruled that House of Fraser had infringed registered trade marks of the well-known clothing company Jack Wills.
The case centred on Jack Wills’ logos of a Pheasant with a top hat and a cane, one of which is registered in respect of a wide range of goods and services including clothing, footwear and headgear.
Jack Wills asserted that House of Fraser’s use of a logo of a Pigeon wearing a top hat, on cardboard tags attached to the exterior of clothing sold under the Linea brand, infringed their rights.
In a comparison of the marks, Arnold J found that there was “a reasonable degree of visual similarity and a high degree of conceptual similarity between the marks”.
Further, in a comparison of the relevant goods, he found that “the goods in relation to which the Pigeon logo was used are identical to goods in respect of which the Jack Wills’ trade marks are registered”. Furthermore, he found that “the specific types of garments on which the Pigeon logo was used (shirts, sweaters, socks and so on) correspond closely to types of garments on which Jack Wills’ trade marks have been used”.
It is noted that other well-known clothing brands utilise logos of birds. For example, Hollister use a flying seagull, Lyle & Scott use an eagle with outstretched wings and Emporio Armarni use an eagle looking to the right. However, Arnold J noted that whilst “consumers will have become accustomed to distinguishing between different bird logos on clothing, they are not accustomed to distinguishing between logos consisting of silhouettes of anthropomorphic birds wearing top hats and other accessories of an English gentleman”.
On this basis, it was held that there existed a likelihood of confusion on the part of the average consumer, compounded by consumer’s imperfect recollection of trade marks, as well as the tendency of the human eye to “see what it expects to see”. Consequently, House of Fraser must no longer use the infringing logo and may be liable to pay damages in addition to costs.
The full decision can be read at http://www.bailii.org/ew/cases/EWHC/Ch/2014/110.html#para11.
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