Lifestyle Equities v Royal County of Berkshire Polo Club [2024] EWCA Civ 814
The claimants are the proprietors of the Beverly Hills Polo Club trade mark and licensing franchise. Their mark includes the name of the club and a picture of a mounted polo player. They sued the defendants for infringement of trade mark and passing off by the use of their club logo which includes the name of the club and a picture of a mounted polo player. The primary use of the marks is on leisure clothing. There are other polo-themed clothing brands, including the well-known Polo by Ralph Lauren, which also use a picture of a mounted polo player as part of their branding.
The primary subject matter of the appeal was whether the trial judge (Mellor J [2023] EWHC 1839 (Ch)) was correct to take into account the presence of such marks used on the third party products in the market in considering the distinctiveness of the claimants’ mark and accordingly its scope of protection against other similar marks. The secondary subject of the appeal was whether he was correct to take into account a number of co-existence agreements between various traders in the market.
The Court of Appeal dismissed the appeal and refused the claimants permission to appeal to the Supreme Court. They held that the trial judge was right on all counts. The Court said that, if marks with enhanced distinctiveness have a greater scope of protection, then it is axiomatic that the opposite also applies. It follows that if the public is accustomed to distinguishing between marks with common elements which are widely used in the trade, then those elements make relatively little contribution to the mark’s distinctiveness. It was common ground that the parties’ names are distinctly different and the judge was accordingly correct to find that there was no likelihood of confusion.
The Court also confirmed the trial judge’s conclusion that co-existence agreements provide a guide to what experienced traders in the market consider is likely to be sufficient to avoid confusion and should be taken into account in evaluating the likelihood of confusion.
This is a significant decision as it establishes clearly in appellate domestic jurisprudence that elements of a mark which are commonly used by traders in a particular field should be given little weight when evaluating the likelihood of confusion whether or not those elements allude to the properties of the goods to which they are applied and that the differences between such marks must be considered as well as the similarities when carrying out the assessment.
Michael Silverleaf KC instructed by Maitland Walker appeared for the successful defendants.