Trademarks. Using a similar logo – how far can you go?

Jack Wills Ltd v House of Fraser (Stores) Ltd [2014] is a case that, in the context of trade mark infringement, concerns brand logos used in connection with men’s clothing. The court in this case considered the likelihood of confusion, unfair advantage, and the issue of whom the “average consumer” was when the parties were selling identical goods but targeting different markets.

The claimant (Jack Wills) claimed that House of Fraser had infringed their UK and Community Trade Marks. J sold their own brand of clothing and aim to appeal to perhaps the more affluent customer between the age range of 16 and 24. J’s logo consists of a silhouette of a pheasant with a top hat and a cane. There were three different versions of the logo, the simplest of which was registered as a UK and Community trade mark.

H sold, inter alia, its own range of casual clothing under the brand name “Linea”. Unlike the claimants, H targeted their brand “Linea” at consumers between the ages of 45-50. From November 2011 to February 2013, H used a logo consisting of a silhouette of a pigeon with a top hat and a bow tie. The comparison between both brand logos can be seen from the image included below:

H had only used the pigeon logo for approximately 15 months, and in that time had sold between 15,000-20,000 garments. It was therefore possible that this confusion may have gone undetected for some time. In the circumstances, it was held that there was a likelihood of confusion on the part of the “average consumer”.

In addition, by November 2011, J’s mark had undoubtedly acquired a reputation, and H’s mark would call J’s mark to the mind of the average consumer. H intention was to provide the pigeon logo with brand significance, and that was how consumers would have perceived it. H was clearly seeking to make their garments more attractive to consumers. It was seeking to influence the economic behaviour of Linea consumers, and there was no reason to think that they would not have succeeded.

It was held that this was a classic example of a retailer seeking to enhance the reputation of their own brand by adopting an aspect of the get-up of an already prestigious brand. It was further held that H’s use of the pigeon logo would have caused a subtle but insidious transfer of image from J’s goods to H’s goods in the minds of some consumers. H had therefore taken unfair advantage of the reputation of J’s trade marks.

Harry Jeffries (Law Student)