If you're looking for our article on the EUIPO decision on emojis as registered trademarks, please click here. 

What has happened?

• The High Court of England and Wales recently ruled on one of many cases brought by Lifestyle Equities in respect of its BEVERLY HILLS POLO CLUB trade mark depicted below, registered for clothing among other things. 

• The case concerned the use by Royal County of Berkshire Polo Club of its polo club logo, also depicted below, for clothing. Lifestyle Equities argued that such use amounted to trade mark infringement, passing off and unlawful means conspiracy.

• Lifestyle Equities has won numerous cases against the defendant in the UK, EU and worldwide, but failed on all claims in the present case. A key factor was that the court considered evidence of the situation in the market, which showed that many polo-themed brands coexist. 

• The court concluded that the crowded nature of the market meant that consumers were less likely to assume a connection between two brands just because they both contain the words "polo club" and a picture of a polo player on horseback. 

• This is an important decision showing how evidence - including on the degree of distinctiveness of the earlier right relied upon – can be decisive. 

• It is also a rare example of the court determining trade mark infringement in numerous countries worldwide (Chile, Panama, Peru, Mexico and the UAE, as well as the UK and EU) which the parties requested for procedural economy.

• It remains to be seen whether Lifestyle Equities will appeal the decision. 

Want to know more?

Overseas countries 

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.

Crowded market

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. 

Direct trade mark infringement 

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.

Indirect infringement 

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."

Passing off and unlawful means conspiracy

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. 

Conclusions

This is an interesting case which might represent a turning of the tide against Lifestyle Equities.  Whether Lifestyle Equities appeals remains to be seen.