On 22 July 2024 judgment was handed down in the Court of Appeal in the case of Lifestyle Equities CV & Ors v Royal County of Berkshire Polo Club Limited & Ors.
The case involved a number of interesting points of law concerning registered trade mark infringement. It highlighted whether the existence of a crowded market of similar themed trade marks and/or the existence of co-existence agreements entered into by the parties with third parties are relevant when assessing whether there is a likelihood of confusion between two marks.
The first claimant was at the time of trial the owner, and the second claimant the exclusive licensee, of registrations for the trade mark depicted below in various countries, including the United Kingdom, for various goods, including clothing:
The claimants contended that the trade marks had been infringed by the defendants, through the use of a number of marks, in particular the mark depicted below on clothing:
At first instance the judge held that there was no likelihood of confusion between the marks in the UK.
He considered that average consumers would distinguish between the two brands, because they would recognise the different place names contained in each of them.
Furthermore, on the facts he found that average consumers were aware that there existed a number of different ‘polo’ brands, i.e. there was a ‘crowded market’ of polo related brands, all using variants of horse and rider motifs. This impacted on the distinctive character of the claimants' trade mark, such that a horse-and-rider motif per se did not have an independent distinctive role.
Average consumers had to rely on other material in the branding to indicate the trade origin of the goods being sold under the trade marks. What would matter to consumers was the different place names contained within the marks, which would avoid any likelihood of confusion between them.
Moreover, the existence of two co-existence agreements between Ralph Lauren and each side to the dispute, with regard to the co-existence of their respective ‘polo horse and rider’ brands, indicated that Ralph Lauren considered that the differences between such brands can be sufficient to avoid customer confusion.
The claimants appealed the decision to the Court of Appeal.
Unsurprisingly, it was held that the existence of a crowded market of similar trade marks is a relevant factor for a judge to consider when assessing whether there is a likelihood of confusion between two marks. If proven, it can mean that a trade mark has a lesser degree of distinctive character, which in turn can mean there is less risk of a likelihood of confusion than might otherwise have been the case between two marks.
In addition, the court held that the existence of co-existence agreements between the parties to a registered trade mark infringement dispute and third parties may form part of the factual background against which a judge must assess whether there is a likelihood of confusion between the parties’ marks. In particular, the agreements may give some insight into what market participants consider to be acceptably similar trade marks, with their differences being sufficient to avoid customer confusion.
The finding that the existence of co-existence agreements between the parties to a registered trade mark infringement dispute and third parties can be relevant when assessing whether there is a likelihood of confusion between the parties’ marks means that care needs to be taken before entering into such agreements. Otherwise, brand owners could find they have prejudiced themselves.
Far too often businesses enter into co-existence agreements without thinking through the long-term implications of consenting to a third party using a similar mark. This is something that the author has previously warned clients about in the past. Often it is better not to enter into a co-existence agreement tolerating third party use of a similar trade mark, rather either to bring infringement proceedings or, if considered not appropriate, to do nothing.
For more information please contact Carl Steele.
