Lessons for owners of sports brands
In a recent case involving the use of trade marks for sports clothing, the Court of Appeal (CA) has confirmed that it is relevant to take account of the fact that there are several traders using common elements of a mark in a particular sector in deciding whether there is a danger of confusion and trade mark infringement. This has important implications for the owners of trade marks generally, especially if operating in a crowded market as the ruling indicates that it will be harder for owners to oppose similar marks in a crowded market.
Lifestyle Equities C.V. & Anor v Royal County of Berkshire Polo Club Limited & Ors
Here, Lifestyle Equities CV claimed that The Royal County of Berkshire Polo Club mark was infringing its Beverley Hills Polo Club mark by being confusingly similar (rival marks set out below).
The CA confirmed that it is correct for the courts to take into account:
- the fact that there is a crowded market for goods/services due to other third party traders using marks with similar features as this could be evidence that the relevant public was used to distinguishing between the marks, reducing the risk of confusion; and
- the fact that each of the parties to the litigation had Co-existence Agreements in place regulating the use of their marks and those of third parties, as this might be evidence as to what the parties felt was necessary in practice to avoid confusion.
Following this test, the CA decided that Lifestyle Equities’ mark had not been infringed by The Royal County as the relevant public was used to distinguishing between the similar elements in each mark (in this case the mounted rider image) and would not be confused in practice, given that the wording used in each trade mark was significantly different.
Furthermore, it was also permissible to take account of any Co-existence Agreements entered into by the parties as this was part of the overall factual background to be considered.
Key take away points
- when filing a new trade mark, it is best to be as original/unique as possible;
- consider carrying out searches before filing a trade mark as this will help to identify any similar marks and marks that have common elements, making it easier to modify the mark to be filed to minimise the risk of objections;
- the decision shows the risk of allowing marks with common elements to be registered rather than objecting to them outright – accordingly, trade mark owners will need to be more willing to object to similar applications than before;
- entering into Co-existence Agreements allowing another party to use a later, similar mark can have adverse consequences in the long term, as the contents of a Co-existence Agreement may be taken by a later court as evidence as to what is needed to avoid confusion arising in practice, making it harder for the original trade mark owner to enforce its mark against later filings;
- it is now more likely that a court will ignore any similar elements of a mark which are used by third parties and focus its attention on the different elements of the mark – these other elements should be as different and as distinctive as possible – in this case the wording “Royal County of Berkshire Polo Club” was clearly significantly different to “Beverley Hills Polo Club” with result that there was no trade mark infringement.
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