Amongst the beasts and birds sewn to the left breast of shirts, jumpers and jackets by fashion labels are the Ralph Lauren polo pony, Lacoste crocodile, Abercrombie & Fitch moose and, the subject of this case, the Jack Wills pheasant. Jack Wills uses three versions of its logo, the simplest of which (below, sporting a top hat and walking stick) was registered in 2007 both as a UK trade mark and an EU Community Trade Mark in class 25 for clothing.
In October 2012, Jack Wills discovered that House of Fraser was selling clothes in its Linea range with a pigeon (below, top hat and bow tie) stitched to the left breast. Jack Wills sued House of Fraser for infringement of its registered trade marks.
The High Court held that House of Fraser’s use in the course of trade of a sign similar to Jack Wills’ registered trade marks for identical goods was an infringement of Jack Wills’ rights. Arnold J found that there was a likelihood of confusion on the part of the public, but not actual confusion, for various reasons including:
- The average consumer of men’s clothing would exercise a moderate degree of attention;
- The Jack Wills’ pheasant had a substantial degree of inherent distinctive character given its gentleman’s attire;
- There was a high level of conceptual similarity: “silhouettes of anthropomorphic birds” with gentleman’s accessories;
- Although other labels also used bird logos, the public was not accustomed to differentiating between these specific concepts; and
- The use of a Linea label would not necessarily prevent confusion as it might be hidden when picking up a folded item or not known to a friend seeing the garment being worn.
The judge believed that these factors would cause a significant proportion of consumers to mistake the pigeon as being the same as the pheasant, or a variant of it, and therefore that they came from the same source.
Arnold J also considered this to be a classic case of a retailer seeking to enhance the attraction of its own brand goods by adopting an aspect of the get-up of prestigious branded goods. As House of Fraser had no justification for this, the court found that the use of the pigeon took unfair advantage of the reputation of the registered trade marks, being a separate infringement.
House of Fraser is apparently considering an appeal. Regardless, this case serves as a useful reminder of the risks of being “inspired” by others’ brands and how it is best to differentiate yourself properly and build your own distinctive brand, rather than try to take advantage of what is already out there.
Jack Wills Ltd v House of Fraser (Stores) Ltd [2014] EWHC 110 (Ch), 31 January 2014
Charles Hylton-Potts
