Lifestyle Equities C.v v. Royal County of Berkshire Polo Club Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Mellor |
| Judgment Date | 19 July 2023 |
| Neutral Citation | [2023] EWHC 1839 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No: IL-2018-000115 |
[2023] EWHC 1839 (Ch)
THE HONOURABLE Mr Justice Mellor
Case No: IL-2018-000115
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
INTELLECTUAL PROPERTY
EUROPEAN UNION TRADE MARK COURT
Rolls Building
Fetter Lane
London, EC4A 1NL
Michael Edenborough KC and Thomas St Quintin (instructed by Brandsmiths) for the Claimants
Michael Silverleaf KC (instructed by Maitland Walker LLP) for the Defendants
Hearing dates: 10 th, 13 th–15 th, 20 th & 21 st June 2022
APPROVED JUDGMENT
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic. This judgment was handed down remotely by circulation to the parties' representatives by email. It will also be released for publication on the National Archives and other websites. The date and time for hand-down is deemed to be Wednesday 19 th July 2023 at 2pm.
THE HON Mr Justice Mellor
| INTRODUCTION | 5 |
| The claims and counterclaims in more detail | 7 |
| The date for assessment | 9 |
| The Claimants' case in more detail | 11 |
| The witnesses | 11 |
| APPLICABLE LAW | 13 |
| Section 10(2) | 14 |
| Assessment of the Likelihood of Confusion | 14 |
| Direct/indirect confusion | 16 |
| The Average Consumer | 16 |
| Context and the ‘crowded’ market | 18 |
| Relevance of Co-existence Agreements | 24 |
| Section 10(3) and equivalents | 25 |
| THE HISTORY OF THE BHPC BRAND | 26 |
| THE CLAIMANTS' “EVIDENCE” | 29 |
| Marginal Annotations | 30 |
| Bundle F | 32 |
| BHPC Sales Figures | 32 |
| Bundle F in more detail | 36 |
| Dream Project srl | 36 |
| Catalogues & Look Books from other licensees | 37 |
| ‘Industry Awards’ | 37 |
| Promotion of the BHPC brand in the UK and EU | 40 |
| Interim conclusions as to the status of the BHPC brand | 41 |
| THE HISTORY OF RCBPC | 42 |
| Dates of first use of the RCBPC brand in various countries | 44 |
| Overall use | 45 |
| THE MARKET IN WHICH THE TWO BRANDS OPERATE | 46 |
| The relevance of polo as a sport | 46 |
| The growth and popularity of polo-themed brands | 47 |
| The evidence of Señor Garcia | 49 |
| The relevance of other polo-themed brands | 53 |
| The Cs' case on the words ‘POLO CLUB’ | 55 |
| APPARENT CONFLICTS BETWEEN THE BRANDS | 56 |
| Complaints from Licensees | 56 |
| F/9/160/PP2401-2408 | 57 |
| Ms Borycz's evidence of confusion | 59 |
| THE SECTION 10(2) CASE | 64 |
| Overview — the Cs' principal contentions | 64 |
| Average consumers | 64 |
| UK — analysis of similarity | 65 |
| EU — similarity analysis | 67 |
| Panama — similarity analysis | 67 |
| Mexico, Chile, Peru | 68 |
| UAE | 68 |
| Assessment of distinctive character | 68 |
| Global assessment of the likelihood of confusion | 70 |
| Indirect Infringement | 70 |
| Direct Infringement | 70 |
| Panama | 70 |
| Mexico, Chile, Peru | 71 |
| UK. | 71 |
| Infringement of the EUTMs | 71 |
| INFRINGEMENT UNDER SECTION 10(3) AND/OR ART 9(1)(C) | 72 |
| Passing off | 73 |
| WHAT I HAVE NOT RELIED ON | 73 |
| JOINT AND SEVERAL LIABILITY | 74 |
| Applicable Principles | 74 |
| D1 as liable for the acts of its licensees | 76 |
| The other allegations of joint liability — summarised at [11 iv)] above | 77 |
| VALIDITY OF MARKS | 77 |
| CONSPIRACY TO INJURE BY UNLAWFUL MEANS | 78 |
| CONCLUSION | 78 |
| Postscript regarding CPR 31.22(2) | 79 |
| Applicable Principles | 79 |
| Analysis | 81 |
INTRODUCTION
In essence this action is concerned with whether the second sign shown below (which belongs to the First Defendant (D1), ‘Sign 3’) conflicts with the first mark (which belongs to the Claimants or the Cs) in a number of different territories, namely, the UK, the EU, Chile, Panama, Peru, Mexico and the UAE:
In a number of trade mark oppositions (and cancellation actions) around the world, C1 has persuaded trade mark tribunals that there is a likelihood of confusion between the first mark and the second sign. In most (if not all) of these cases, the relevant tribunal either did not receive evidence of the situation in the market or did not take account of it. The Cs rely on these decisions as supporting a finding of a likelihood of confusion between the second sign and the first mark.
In this trial, the Defendants put in a considerable amount of evidence to establish how (in their submission) the Cs' mark, the Defendants' Sign and other ‘polo’ brands have continued to exist alongside each other in many countries around the world. Via this evidence, the Defendants pose what they characterise as a simple dilemma:
i) On the one hand, if there really was a likelihood of confusion between C1's mark and the Defendants' Sign, confusion must have been occurring for years on a very widespread scale between all the ‘polo’ brands;
ii) On the other hand, the existence of all the ‘polo’ brands in the market indicates that consumers are able to distinguish between them. If so, consumers also distinguish between the Cs' mark and the Defendants' Sign. So, they say, there is no likelihood of confusion.
For their part, the Cs take the following position:
i) The Cs accept that both they and D1 have co-existence agreements with Ralph Lauren (‘RL’), the owner of the well-known Polo Ralph Lauren brand (‘RL Polo’), in which RL imposed certain restrictions on their respective branding but which permitted their current respective branding;
ii) The Cs accept that, of the ‘polo-themed’ clothing brands in the market, the RL Polo brand is No.1 in this market and US Polo Association is No.2;
iii) They assert that their brand is ranked No.3 in the market;
iv) They assert that those three brands are able peacefully to co-exist;
v) Despite that, they assert there exists a likelihood of confusion between C1's mark and the Ds' Sign 3.
The situation is not as simple as either side suggests and their positions beg the main question I have to decide, which is whether there exists a likelihood of confusion between the Cs mark and the Ds sign(s) in various countries. So far as is possible on the evidence led in this trial, it is necessary to assess the situation in each country in issue. However, as will appear, it is only possible or feasible to make the assessment in relation to certain groups of countries.
Although I have highlighted the key issue for determination, as is regrettably common, the parties have managed to raise a significant number of issues for determination, some of which descend into minute details found in the evidence and documents. Furthermore, the issues in these trade mark cases often require a significant citation of caselaw (or summaries thereof) so that the Court is correctly oriented to decide each issue.
Although this case can be decided with an application of established principles, it does raise in a stark form the scope of protection which is or should be afforded to a registered trade mark which is used in a crowded market i.e. a market in which there are several trade marks using similar motifs and which incorporate the same or similar words. The overall question in such circumstances of ‘How far does the exclusive right which is conferred by registration extend?’ can only be answered by addressing the conventional approach laid down in the CJEU caselaw.
The claims and counterclaims in more detail
C1 is a Dutch company and the registered proprietor of all the registrations of the mark shown above in all countries relevant to this claim, although it does not own the mark worldwide (specifically not in the USA). C2 is also a Dutch company and the exclusive licensee of all the marks in issue. Mr Edenborough KC leading Mr St Quintin argued the case for the Cs.
All claims against the Sixth to Eleventh Defendants have been stayed, so all references to ‘the Defendants’ (‘the Ds’) are to the First to Fifth Defendants (hereafter D1–D5, as appropriate). D1 is the company which operates the Royal County of Berkshire Polo Club. The Club was founded in 1985 by the late Bryan Morrison (then the manager of Pink Floyd). His widow (now deceased) was the Second Defendant, now represented by her personal representative, Mr Gentle, who is a solicitor. The Third Defendant is the son of Mr and Mrs Morrison and the current chairman of the Club.
Until around November 2018, D4 was D1's licensing agent, with D5 its sole director. D4 and D5 have no ongoing connection with the matters in dispute and have joined forces with D1–3 to defend the claim. Hence, D1–5 were represented by Mr Silverleaf KC, instructed by Maitland Walker LLP.
The principal claims are for infringement of the Cs' registered trade marks, registered in the form shown above. The Cs allege:
i) Infringement in the UK and EU due to the existence of a likelihood of confusion, also in Chile, Panama, Peru, Mexico and the UAE (‘the Overseas Territories’) by acts...
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