In an interesting decision, Arnold J has recently held that the House of Fraser's pigeon logo was an infringement of Jack Wills' pheasant logo.

Well-known to a lot of people, Jack Wills is a successful clothing brand aimed at affluent 16-24 year olds and has used the "Mr Wills" logo since about 2007. This is an image of a pheasant with a top hat, scarf and cane, which is intended to represent an upmarket, British brand but with a quirky, fun and irreverent side.

Probably even better known, House of Fraser sells a mixture of third party branded goods as well as its own-brand products. One of those in-house brands is "Linea". In 2011, House of Fraser began selling garments bearing a logo in the form of a pigeon wearing a hat.

It took until almost a year later in October 2012 before Jack Wills became aware of the House of Fraser pigeon logo. This led to their solicitors sending a letter before action to House of Fraser, followed by the litigation which culminated in the judgment of Arnold J in the High Court handed down on 31 January 2014.

In the proceedings, Jack Wills alleged trade mark infringement contrary to Articles 5(1)(b) and 5(2) of the Trade Marks Directive.

The judge agreed with Jack Wills and said that the average consumer was likely to be confused by the House of Fraser pigeon into mistaking it for the Jack Wills pheasant (Article 5(1)(b)). This was despite the House of Fraser clothing having been on sale for 15 months with no evidence of any actual confusion emerging.

The judge also held that the House of Fraser pigeon took unfair advantage of the Mr Wills trade mark (Article 5(2)). He said that the use of the pigeon enabled House of Fraser to benefit from the reputation and goodwill of the Mr Wills logo without paying compensation for it. Even if House of Fraser had not directly intended to "free-ride" on the back of the Mr Wills trade mark, they intended their own pigeon logo to have brand significance and that was the practical effect of what they had done..

Comment

This decision is a welcome boost to brand owners. While the findings of the judge on likelihood of confusion were, perhaps, fairly predictable, it is his finding that "unfair advantage" of the trade mark was taken without the specific intention to do so that will reverberate more widely.

Until this decision, when it came to cases on unfair advantage, it had been assumed that one of the key criteria was a positive intention on the part of the infringer to take advantage of the particular trade mark in question. Here, the judge made clear that he was making no finding of any specific intention on the part of House of Fraser deliberately to free ride on Jack Wills. But the very fact that in general they sought commercial advantage by adopting the pigeon logo was sufficient to make them infringers.

It is possible that House of Fraser will appeal on this point and try to argue that the judge's wider interpretation of Article 5(2) is wrong as a matter of principle. However, one factor that may militate against an appeal is the judge's finding on likelihood of confusion. Since it is in effect a finding of fact by a very experienced IP judge, based on well-established principles that will not be easy.

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