Establishing the pecking order - Jack Wills wins in trade mark dispute with House of Fraser over bird logo

The UK's High Court has ruled in favour of Jack Wills (a UK and online casual clothing brand) in a trade mark infringement claim brought against House of Fraser. The case, decided by Mr Justice Arnold, contains a useful reminder of the law in respect of infringement and interesting observations around distinctiveness of logos and the average consumer.

Background
Jack Wills has been using a logo featuring a pheasant in a top-hat with a cane in silhouette since before 2009 (the "Jack Wills Logo"). The Jack Wills Logo is a registered UK and Community Trade Mark. The Jack Wills Logo appears embroidered on some Jack Wills garments, on shopping bags and other merchandise. In November 2011, House of Fraser started selling a line of menswear in their "Linea" collection, with some items featuring  an embroidered logo of a pigeon in a top hat in silhouette (the "Pigeon Logo"). Jack Wills sent a letter before action in October 2012. House of Fraser stopped using the Pigeon Logo in February 2013, but Jack Wills proceeded with court action.

The Law
European Directive 2008/95/EC (the "Directive"), Article 5 deals with "rights conferred by a trade mark", which allow the proprietor of a registered trade mark exclusive use of that trade mark. The proprietor has ability prevent third parties from using, in the course of trade, signs which are similar to the trade mark on goods or services covered by the registration, where there is a likelihood of confusion on the part of the public (Article 5(1)(b)). The proprietor may also prevent use of a similar sign on goods and services different to the proprietor's if that use would give the infringer an unfair advantage or would be detrimental to the character or repute of the trade mark (Article 5(2)).

The Ruling
The Court examined the issue of likelihood of confusion, which "should be judged through the eyes of the average consumer of the goods or services in question" [1]. The two retailers targeted different markets (with Jack Wills targeting younger people and Linea menswear targeting men in their 40s) but Arnold J found that the average consumer for the particular goods could include a spectrum of groups. Many older people purchased Jack Wills for themselves, 50 year old women were the average purchaser of Linea menswear, and both brands made significant sales from people buying gifts for others. Arnold J noted that the Jack Wills Logo had acquired a distinctive character through use, and that though this distinctiveness may only be relevant or apparent to one segment of the average consumer group for the goods in question (i.e. 16-24 year olds), this would not deprive the logo of distinctiveness across the group as a whole.

The Judge also discussed "free-riding", or taking unfair advantage of the distinctive character or repute of a registered trade mark. Arnold J considered that the intention to take unfair advantage was not the deciding factor, but rather that the Court should consider the logical effect of the use of a similar mark to one with an established reputation.

Finding that the logos were both visually and conceptually similar, and following the reasoning summarised above, Arnold J found that there was a likelihood of confusion under Article 5(1)(b) and that House of Fraser had taken unfair advantage of Jack Wills' reputation under Article 5(2).

The full case citation is Jack Wills Ltd v House of Fraser (Stores) Ltd [2014] EWCH 110 (Ch).

[1] Kitchin J in Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24 [2012] FSR 19 at [52] (b)