Lifestyle Equities CV and anor v Royal County of Berkshire Polo Club Ltd and ors [2023] EWHC 1839 Ch
This was the trial of an action for trade mark infringement and passing off brought by the owner of the Beverly Hills Polo Club brand against yet another competing brand using a polo theme. The action included claims against the licensor, the Royal County of Berkshire Polo Club, its directors, its former licensing agent and its director and the club’s licensees in six foreign jurisdictions. The trial was heard by Mellor J in June 2022. The claim sought to prevent the use of a logo comprising the name of the club with a figurative representation of a mounted polo player. The claimants’ logo comprises the name of its (fictional) polo club with a different figurative representation of a mounted polo player.
The judge held that the market for polo-themed clothing is a crowded one in which there are a number of participants using logos depicting mounted polo players, the largest and best-known brand being Polo by Ralph Lauren. He concluded that in such a market the names of the brands must be the primary distinction between them. He also held the evidence of alleged confusion failed to establish that there had been any significant confusion or that it was caused by the logo. He determined that the evidence of rather sporadic sales advanced by the claimants failed to establish a reputation other than in Italy. Consequently, the claim to enhanced distinctiveness through use failed. Both trade mark infringement and passing off claims were dismissed.
The judge held that he would have found the individual defendants personally liable had the club been liable as principal. However, he questioned the need for inclusion of such claims in the circumstances. The action also included a claim for conspiracy to injure by unlawful means, the inclusion of which the judge said left him bemused as it added nothing to the claim for infringement.
Michael Silverleaf instructed by Maitland-Walker LLP appeared for the defendants.