On Thursday 5 August 2021, the Court of Appeal handed down its unanimous decision on Halewood International's appeal which sought to overturn a first instance decision of Justice Fancourt that their AMERICAN EAGLE sign infringed Sazerac Brands' EAGLE RARE trade mark.
In the first instance decision, it was held that AMERICAN EAGLE infringed the EAGLE RARE trade mark as there was a likelihood of 'indirect confusion' between the brands. 'Indirect confusion' arises in circumstances where consumers are confused by the origin of a particular brand, for example as they believe it is connected with another brand. This can be distinguished from 'direct confusion', which arises where consumers cannot tell the difference between the brands themselves and mistakenly believe they are one and the same.
Lord Justice Arnold rejected Halewood's appeal submission that there is a "special test" for assessing indirect confusion in the context of "brand extension" in the drinks industry where particular variants of well-known brands use similar names to indicate the same trade origin e.g. JACK DANIELS and GENTLEMAN JACK.
He ruled that the assessment of "likelihood of confusion" remains a multifactorial test on established legal principles and the first instance judge had applied the correct test to the particular facts of the case with no error of law or legal principle.
The judgment also addressed the scope of assessment when considering likelihood of confusion, confirming that it is perfectly acceptable to take into account evidence of future plans for further use of an infringing brand, including in situations where there is a likelihood of 'wrong-way-round' confusion and "swamping".
A Fieldfisher team led by Co-head of IP John Linneker, Partner Harriet Seymour, Director Sheena Sheikh Brown and Senior Associate Fiona Waples acted for the successful claimant Sazerac Brands.
Commenting on the win, John Linneker, Co-head of IP at Fieldfisher said:
We are delighted at this excellent result for Sazerac and are very pleased that the Court of Appeal has confirmed the finding of trade mark infringement made by the first instance judge.
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