Jack Wills Ltd v House of Fraser (Stores) Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Arnold |
| Judgment Date | 31 January 2014 |
| Neutral Citation | [2014] EWHC 110 (Ch) |
| Docket Number | Case No: HC12B04462 |
| Court | Chancery Division |
| Date | 31 January 2014 |
[2014] EWHC 110 (Ch)
The Hon Mr Justice Arnold
Case No: HC12B04462
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Rolls Building
Fetter Lane, London, EC4A 1NL
Roger Wyand QC and Andrew Norris (instructed by Mishcon de Reya) for the Claimant
Michael Bloch QC and Tom Cleaver (instructed by Lewis Silkin) for the Defendant
Hearing dates: 20–21 January 2014
HTML VERSION OF JUDGMENT
Contents
| Topic | Paragraphs |
| Introduction | 1–4 |
| The Logos | 5–10 |
| The Trade Marks | 11 |
| The witnesses | 12–14 |
| Factual background | 15–51 |
| Jack Wills | 15–24 |
| The Mr Wills Logo | 25–27 |
| House of Fraser | 28–29 |
| Linea | 30–31 |
| The Pigeon Logo | 32–45 |
| Use of the Pigeon Logo | 46–47 |
| The genesis of the dispute | 48 |
| Other bird logos | 49–51 |
| The law | 52–84 |
| The key provisions of the Directive and the Regulation | 52–53 |
| Article 5(1)(b) of Directive/Article 9(1)(b) of the Regulation | 54–68 |
| Article 5(2) of the Directive/Article 9(1)(c) of the Regulation | 69–84 |
| Assessment | 85–110 |
| Article 5(1)(b) of the Directive/Article 9(1)(b) of the Regulation | 85–103 |
| The average consumer | 85–86 |
| Distinctiveness of the Trade Marks | 87–90 |
| Comparison between the Trade Marks and the Pigeon Logo | 91–95 |
| Comparison between the respective goods | 96 |
| Context of use | 97–98 |
| No evidence of actual confusion | 99–102 |
| Conclusion | 103 |
| Article 5(2) of the Directive/Article 9(1)(c) of the Regulation | 104–110 |
| Did the Trade Marks have a reputation in November 2011? | 107 |
| Was there a link? | 108 |
| Did use of the Pigeon Logo take unfair advantage of the | 109–110 |
| reputation of the Trade Marks? | |
| Conclusion | 111 |
Introduction
It has become commonplace for clothing companies to adopt logos as part of their branding which are used in various ways, but in particular embroidered or appliquéd on the left breast of shirts, sweaters and similar garments. Well-known examples include the Fred Perry laurel wreath, the Lacoste crocodile and the Polo Ralph Lauren polo player. It is common for such logos to be registered as trade marks. Does the proprietor of such a trade mark have a legal remedy if a competitor adopts a similar, but not identical, logo? That is the question raised by this case.
The Claimant ("Jack Wills") is a clothing retailer. As explained in more detail below, it sells its own brand of mainly casual clothing through a chain of stores in the United Kingdom (and elsewhere) and online. It uses a logo consisting of a silhouette of a pheasant with a top hat and cane, which it refers to anthropomorphically as "Mr Wills" ("the Mr Wills Logo"). As explained below, it uses three different versions of this logo. The simplest version is registered as both a UK and a Community trade mark ("the Trade Marks").
The Defendant ("House of Fraser") is a department store operator. As well as retailing well-known brands, it sells its own range of men's clothing under the brand name Linea. From November 2011 to February 2013 it used a logo consisting of a silhouette of a pigeon with a top hat and bow-tie ("the Pigeon Logo") on a selection of Linea garments. It used two slightly different versions of this logo.
Jack Wills claims that House of Fraser's use of the Pigeon Logo constituted trade mark infringement and passing off. House of Fraser denies infringement or passing off. It is common ground that the claim for passing off stands or falls with the claim under Article 5(1)(b) of the Directive, and accordingly I shall say no more about it. Although House of Fraser counterclaims for a declaration of invalidity of the Trade Marks, this is only relied on by way of a squeeze. Since House of Fraser's case as presented in counsel's closing submissions was really one of non-infringement rather than invalidity, I shall say no more about this either. A counterclaim for partial revocation of the Trade Marks for non-use was abandoned during the trial.
The Logos
The most elaborate version of the Mr Wills Logo is shown below:
This version is mainly used on carrier bags. It is usually printed in white on a navy background.
A less elaborate version of the Mr Wills Logo is shown below:
This version is used on swing tickets on almost all Jack Wills products. The exceptions are denim products prior to the Autumn/Winter 2013 season, leggings and jewellery (as to which, see below). It is also used on the majority of Jack Wills' promotional materials, and in particular its handbooks (catalogues). It is also used on the reverse of care labels in clothing. It is most commonly printed in cream on a navy background, but sometimes it is printed in navy on a white background or in white on a coloured background.
The simplest version of the Mr Wills Logo, and the one which forms the subject-matter of the Trade Marks, is shown below:
This version is embroidered on the exterior of many items of clothing, in particular on the left breast of shirts, sweaters and similar garments. In some cases, it appears in a different position, such as on left front tail of rugby shirts and long-sleeved tee-shirts, on the left leg of boxer shorts and on the ankle of socks. It is also embroidered on the reverse of the size label in all Jack Wills clothing. This version is also used in a variety of other ways: it was used on the swing tickets for denim products until the Autumn/Winter 2013 season; it is used on a metal disc attached to jewellery; it is used on header cards or belly bands for leggings; it is used multiple times on the linings of some suits and jackets; it is used as the website identifier. When embroidered on clothing, the logo is used in a range of different colours. When used in other ways, it is usually printed in navy on cream, in black on white or in white on a coloured background.
The version of the Pigeon Logo which House of Fraser used (accompanied by the legends "No. 1" and "linea") on small cardboard tags attached to the exterior of garments is shown below:
This version was printed in dark grey on a cream background.
A slightly simplified version of the Pigeon Logo was embroidered onto the left breast of shirts, sweaters and similar garments. It was also embroidered in other positions such as on the left front tail on some shirts and tee-shirts and on the ankle of socks. As with the Mr Wills Logo, it was embroidered in a variety of colours.
A number of side-by-side comparisons of the two logos as they appear on Jack Wills and Linea shirts and sweaters are reproduced in the Annex to this judgment.
The Trade Marks
The simplest Mr Wills Logo is registered as UK Trade Mark No. 2449189 in respect of goods and services in Classes 9, 14, 18, 25 and 35 and as Community Trade Mark No. WE000000971102 in respect of a very similar specification of goods and services. Both Trade Marks are registered in respect of "clothing, footwear, headgear" in Class 25.
The witnesses
Philip Thomas has been Jack Wills' Director of Merchandising since August 2012. He gave evidence about Jack Wills, its branding and its merchandise. He was a straightforward witness.
Emma Sheller has been Jack Wills' Chief Marketing Officer since May 2013. She gave evidence about Jack Wills' marketing and promotional activities. She was also a straightforward witness.
Jacqueline Hay has been House of Fraser's Executive Director of Menswear and Childrenswear since 2012. Prior to that, she was its Director of Buying. She has worked for House of Fraser for nine years. I regret to say that she was not a satisfactory witness. She was more concerned to defend House of Fraser's position than to give candid evidence. As a result, she was evasive in her answers, and repeatedly had to be pressed for a full and accurate response. On a number of occasions, this led to her conceding a point which she had initially avoided conceding. Even then, some of her evidence stretched credulity.
Factual background
Jack Wills
Jack Wills was founded by Peter Williams and Robert Shaw in 1999. They knew each other through attending the same university. Not long after graduating, Mr Williams decided to start his own fashion company and approached Mr Shaw to join him. Mr Williams envisaged a brand that epitomised the fun, carefree days of university life, and specifically wanted to target more affluent university students. The pair opened their first Jack Wills store in Salcombe, Devon. A second store was opened in Aldeburgh, Suffolk in 2000. In June 2005 a third store was opened in Clapham, London. In 2006 stores were opened in Bristol and Bath. From 2007 onwards, growth speeded up, with five stores opening that year, including a second London store in Notting Hill. In 2008, 11 UK stores were opened, with 8 opening in 2009, 7 in 2010, 11 in 2011 and 8 in 2012. Jack Wills now has a total of 52 UK stores, including 10 in London. There is also a Jack Wills concession in Selfridges and a franchised store in Jersey. In 2010 Jack Wills expanded into the USA. It now has stores in the USA and Hong Kong and franchised stores in Kuwait, Dubai and Beirut. In total there are currently 72 Jack Wills stores worldwide. In addition, Jack Wills sells products online. Worldwide turnover has grown from £22 million in the year ending 31 January 2008 to £133 million in the year ending 3 February 2013.
At the start of the business, Jack Wills mainly produced "gym-wear" i.e. tee-shirts, sweatshirts, hoodies, sweatpants and rugby shirts. Since then, the range of its clothing has substantially expanded, and such products now only account for 15–20% of the range. Since 2006, the focus of the brand has moved towards more traditional British...
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