Polo Club marks "reined" in: Lifestyle Equities v Royal County of Berkshire Polo Club
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Overview
This case is one of a number brought in recent years by Lifestyle Equities, owner of the BEVERLY HILLS POLO CLUB marks*.
Lifestyle Equities (the "Cs") argued that this was "a case for a straightforward application of established principles", claiming trade mark infringement under heads of likelihood of confusion and reputation/dilution as well as passing off. However, very little about the case was straightforward.
In essence, the Court found there to be no likelihood of confusion, some reputation but no dilution, and no passing off. These simple conclusions belie the complexities dealt with in the 77 page judgment.
Outside the ordinary
This case is rather unusual in the number of 'extra elements' included:
- the Cs claimed conspiracy to injure by unlawful means. The judge dismissed this claim, which he said added nothing; the unlawful means relied upon were the alleged acts of trade mark infringement and passing off and it seemed to be nothing but an attempt to oppress.
- the Cs added claims of joint liability between the 11 defendants (the "Ds"). This claim clearly irritated the judge; he addressed it nonetheless, saying if there had been infringement there would have been at least some joint liability among the Ds. However, the judge's view was that pursuing these claims plus the claim of conspiracy to injure by unlawful means showed that the Cs's approach to the litigation "was as oppressive as possible and not proportionate".
- the Cs sought resolution in the UK, EU, Chile, Panama, Peru, Mexico and the UAE. The parties agreed to apply UK and EU law to all territories (because of the timing in relation to Brexit, the court was able to apply EU law to the EU aspects of the case). It is not specified but presumably the parties agreed to be bound by the decision in all territories notwithstanding the facts that a) the local law may have come to different conclusions and b) the court would not be able to grant an injunction enforceable in all territories. It was also agreed that the Ds could avail themselves of local law defences in one of the territories, and that these would be considered after judgment if they were relevant at that point (which they were not).
- there was an issue over the date for assessment of the alleged infringing acts. The parties had agreed that "questions of infringement are to be assessed using a single relevant date, the date of the claim form which was 25 June 2018". However, the parties seemed to understand different things by this, and whilst the Cs argued infringement should be assessed as if it commenced on the date of the claim form, the judge took the Ds' view that infringement should be assessed at the date of the claim form on the basis of the situation which then existed.
- the Cs requested that their sales figures be redacted from the public version of the judgment as they considered them confidential. They referred to the 17 July 2023 Court of Appeal judgment in J C Bamford Excavators Ltd v Manitou UK Ltd & Anor for support. The judge refused, because a) he had not revealed the exact figures but aggregated them, b) the figures were not technical trade secrets but lower grade confidential information, and c) publication was necessary for open justice and to enable his reasoning to be understood.
Trade mark infringement & passing off
The Cs claimed that the Ds' Sign infringed their Mark under ss10(2) & 10(3) Trade Marks Act 1994 (and EU equivalents) and amounted to passing off. Note that the s10(3) claim was limited to dilution of distinctive character only.
Crowded market
The reality was that there was a 'crowded market' for polo-themed goods, with numerous brands existing alongside the Cs' brand as well as Ralph Lauren Polo (RLP) and the US Polo Association (USPA), which were acknowledged by both sides to be the top two selling polo brands. This impacted the way the average consumer viewed and recalled the Mark and so affected its distinctiveness.
The Cs seemed to be somewhat selective when looking at the crowded market. Their argument that only RLP and the USPA should be taken into account when assessing distinctiveness while others should not was rejected. The judge also rejected their rather conflicting argument that the words POLO CLUB were distinctive on their own, and held that no one element of the Mark was dominant. Arguments that the horse and rider motif had enhanced distinctive character, was dominant and had an independent distinctive role in the mark failed. Only RLP's horse and rider motif, of all those on the market, functioned as a trade mark on its own.
Further, the Cs's argument that the various co-existence agreements referred to in evidence were irrelevant to the assessment of likelihood of confusion was rejected, although the judge underlined that the existence of a co-existence agreement does not necessarily imply a conflict.
No confusion
The judge considered territory-specific factors when considering traits of the average consumer and the similarity of the Mark and Sign in each jurisdiction, and found no impactful variation between them. He then assessed the distinctive character of the Mark by jurisdiction, holding that in the UK and Italy the Mark had some enhanced distinctive character (as a whole, not in any individual element) due to the reputation he had found in certain goods (see below).
When he went on to assess globally the likelihood of confusion, he found none, rejecting the arguments for indirect infringement because "[t]he circumstances in this case, with the crowded market along with the elements in the Mark and the Sign, militate against anyone viewing the Sign as a sub-brand or as a brand refresh" [296], and rejecting the arguments for direct infringement because there was simply no evidence of confusion or its likelihood in any territory. The Ds' evidence showed no confusion between the numerous polo brands in South America and that a horse and rider motif is generic for such brands, which must rely on other branding cues and especially the name to indicate origin.
No dilution or passing off
The claim to dilution of a mark with a reputation was rejected. The judge had found reputation in: Italy for menswear, childrenswear, footwear, bags and accessories; Spain for bedding and bags; and UK for luggage, menswear and childrenswear. However, "[b]earing in mind all the relevant circumstances, I find that the average consumer would make no link between Mark and Sign. Even if I assume that a link would be made, it would not, in my judgment, give rise to any of the three forms of relevant injury or any damage to the Cs' Mark at all. At best, a consumer might wonder whether there was a connection and conclude not due to the differences between Mark and Sign."
Passing off also failed: the parties had agreed that it would stand or fall with trade mark infringement, but in any event the judge found (separately and without analysing it) that it failed.
Other points to note
- Evidence: the judge was highly critical of the Cs' evidence. He found much of it to be lacking and incomplete, and found the witnesses unpersuasive; one was too "passionate" and the other "was essentially programmed to say that anything related to RCBPC was confusing". Evidence had unexplained marginal annotations and did not adequately explain the contents of the annexes. Sales figures were not presented clearly and were inaccurate. Further, the sales were of a significantly lower financial value than the Cs would admit. Aspects of the evidence were "materially misleading and untrue"; the judge felt he had been presented with "exaggeration … as to the scale and reach of the BHPC brand".
Further, there was very little evidence of where the Ds had traded under that brand. The Cs' best case was in Italy, in respect of which the only evidence provided of the Ds trading was one webpage from amazon.it which did not seem to bear the Signs and appeared to be a one off sale.
The judge was also somewhat critical of some of the Ds' evidence.
- Surveys: the Cs conducted two surveys which they had not disclosed but which they had attached to their Closing Submissions. The judge commented that "[b]oth surveys are perfect examples of a survey which asks leading questions of a scenario which would never be encountered in real life by a consumer and which yields results of absolutely no use or probative value. It is not surprising that the Cs placed no reliance on them."
- the judge made clear he wouldn't be "persuaded" like other tribunals faced with actions by the Cs, and would inspect the evidence closely and come to his own conclusions. One wonders whether the Cs possibly had an easier time succeeding in other jurisdictions/forums and therefore whether the outcome of this case may have come as a surprise to them.
- two of the Ds' UK marks were revoked for non-use which had been admitted, whilst revocation of two others was refused as there had been genuine, albeit small scale, use.
Comments
There is a lot here to take into account when building and proving a compelling case. The judge was very thorough in his analysis and weighing up of the evidence, and had a clear (and empathetic) understanding of the suffocating effect the litigation (and the way it was conducted) had had on the Ds.
We do not yet know whether the Cs may appeal this judgment but given how active they have been in protecting their mark, we should not be surprised if they do.
* A non-exhaustive list includes UK infringement actions against: Santa Monica Polo Club (Supreme Court, led to separate action Lifestyle Equities v Ahmed, also in the Supreme Court); Amazon (Supreme Court); Santa Barbara Polo & Racquet Club (Court of Appeal); Greenwich Polo Club (High Court); Sports Direct (High Court), as well as a large number of registry actions of all types.