Lifestyle Equities CV & Ors v Royal County of Berkshire Polo Club Limited & Ors
[2024] EWCA Civ 814
Lifestyle Equities C.V. & Anor v Royal County of Berkshire Polo Club Limited & Ors
19 July 2023
[2023] EWHC 1839 (Ch)
High Court
Two polo-themed clothing brands fought over similar logos. The judge said the logos weren't confusing because lots of similar brands already exist, and one brand's evidence wasn't believable. One brand had to give up some of its logos.
Key Facts
- •Lifestyle Equities C.V. and Lifestyle Licensing B.V. (Claimants) sued Royal County of Berkshire Polo Club Limited and others (Defendants) for trade mark infringement and passing off.
- •The dispute centered on the similarity between the Claimants' "Beverly Hills Polo Club" mark and the Defendants' "Royal County of Berkshire Polo Club" mark.
- •The case involved multiple jurisdictions: UK, EU, Chile, Panama, Peru, Mexico, and UAE.
- •The Defendants presented substantial evidence of co-existence of numerous 'polo' brands in various markets.
- •The Claimants relied on previous trade mark decisions where market context wasn't considered.
- •A key issue was the date for assessing infringement – the date of the claim form or the date of the alleged infringement's commencement.
Legal Principles
Likelihood of confusion assessment: global appreciation of all relevant factors, average consumer perspective, visual, aural, and conceptual similarities.
CJEU caselaw, summarized in Specsavers v Asda
Section 10(2)/Article 9(1)(b) infringement requires likelihood of confusion.
UK Trade Marks Act and EUTMR
Section 10(3)/Article 9(1)(c) infringement requires reputation, link, detriment/unfair advantage, and lack of due cause.
UK Trade Marks Act and EUTMR
Passing off requires likelihood of confusion.
UK common law
Joint and several liability principles for authorization of infringing acts.
MCA v Charly, CBS v Amstrad
Distinctiveness of a trademark is assessed considering its use in the market, including the presence of similar brands.
Specsavers, Jack Wills
Confidentiality of commercial information needs to be balanced with open justice, especially when such information is essential to understanding judicial reasoning.
J.C. Bamford Excavators Limited v Manitou UK Ltd
Outcomes
Claimants' action for trade mark infringement and passing off dismissed.
No likelihood of confusion found between the marks; significant co-existence of similar brands in relevant markets; insufficient evidence of actual confusion; Claimants' evidence deemed exaggerated and misleading.
Defendants' UK trade marks UK 617 and UK 406 revoked for non-use.
Defendants admitted lack of genuine use.
Claimants' action for conspiracy to injure by unlawful means dismissed.
No infringement found.