Clothing brands often use graphic logos on garments, such as on the left breast of shirt or jumper. Some of these graphic logos are instantly recognisable as denoting a particular brand and registered as trade marks. Well known examples include the Lacoste crocodile, the Original Penguin and the Ralph Lauren polo player.
Use of a graphic logo in this way was considered by the High Court recently in a trade mark infringement claim brought by Jack Wills against House of Fraser.
Since around 2007 Jack Wills has used three different variations of a logo depicting a pheasant in profile wearing a top hat and carrying a cane on carrier bags, swing tickets, promotional materials as well as on clothing (e.g. embroidered on the exterior of shirts, sweaters and ankle socks). Jack Wills registered a version of the Mr Wills Logo as a trade mark in the UK and EU for goods including “clothing” in class 25 (the “Mr Wills Logo”).
In November 2011, House of Fraser started using a mark comprising the silhouette of a pigeon wearing a top hat and bow tie on its own ‘Linea’ range of men’s clothing, including embroidered on the exterior of shirts, t-shirts, sweaters and ankle socks (the “Pigeon Logo”).
Jack Wills objected to the use of the Pigeon Logo by House of Fraser and issued a claim for trade mark infringement and passing off which was successful on the following grounds:
The High Court held that a significant proportion of average consumers (i.e. consumer of men’s clothing, in particular casual clothing), relying on their imperfect recollection, would mistake the Pigeon Logo for the Mr Wills Logo, or a variant of it, and be confused into believing that clothing bearing the logos, originated from the same or an economically linked source. Relevant to this finding was the fact that the Mr Wills Logo was distinctive and there was a high degree of conceptual similarity between the two logos which not only depict birds but specifically silhouettes of birds wearing the accessories of an English gentleman, notably top hats.
The High Court also held that House of Fraser’s use of the Pigeon Logo would, without due cause, take unfair advantage of the reputation of the Mr Wills Logo. The High Court found that House of Fraser’s use of the Pigeon Logo on garments had “brand” significance and was not merely ornamentation. By adopting an aspect of the get-up associated with Jack Wills, House of Fraser enhanced the attraction of its own Linea brand of goods and sought to influence the economic behaviour of consumers of those goods. As a result, there would be a subtle transfer of image of the Mr Wills Logo to the Pigeon Logo, whether or not this was House of Fraser’s intention.
This case shows that use of a graphic logo on garments can have “branding” impact on consumers, even where the graphic logo is used in the context of an established brand. Before using a graphic logo in this way, you should do some due diligence and may wish to obtain a clearance search to determine whether any third party has earlier rights in a similar sign. You should think carefully about whether your proposed use is likely to cause confusion amongst consumers or take unfair advantage of the reputation of a third party’s trade mark or get-up.