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Unusually, the court considered whether there was trade mark infringement in Chile, Panama, Peru, Mexico and the UAE, as well as the UK and EU, on the request of the parties.
The law of England and Wales was applied to the test of infringement in these countries, with an agreement that – if infringement was found – the court would then consider any defences that might be available under applicable national laws.
The court also considered infringement in the EU since the claim was commenced before the end of the Brexit transition period.
The court noted that in most (if not all) previous cases involving Lifestyle Equities, the relevant tribunal/court either did not receive evidence of the situation in the market or did not take account of it.
There was considerable discussion in the decision on if/how there being a crowded market was relevant to the question of trade mark infringement, ie whether it is relevant to the context of infringement or whether it goes to the distinctiveness of the earlier mark.
In the end, the court concluded that the answer to the question is relevant to the assessment of the degree of distinctiveness of the earlier mark.
The evidence presented showed that there are many brands for clothing and accessories that are polo club-themed, including Ralph Lauren Polo (RLP) and the US Polo Association (USPA). This crowded nature of the market in turn meant that consumers were less likely to assume a connection between two brands just because they both contained the words "polo club" and a picture of a polo player on horseback.
The court also found that the level of trade in the UK and the EU had been insufficient for Lifestyle Equities' mark to gain enhanced distinctiveness through use.
Considering the above factors, the court concluded that there was insufficient likelihood of confusion between the marks despite the identity of goods. The differences between the marks were sufficient even for a non-English speaking consumer to distinguish them. Evidence of actual confusion could have helped the claimant.
The court held that, "The circumstances in this case, with the crowded market along with the elements in the Mark and the Sign, militate against anyone viewing the Sign as a sub-brand or as a brand refresh. Accordingly, I reject the case on indirect infringement."
There was no passing off as the parties had agreed that if the trade mark infringement claim failed so did the passing off claim. The unlawful means conspiracy claim also failed since it relied on a finding of trade mark infringement.
This is an interesting case which might represent a turning of the tide against Lifestyle Equities. Whether Lifestyle Equities appeals remains to be seen.