Lifestyle Equities CV & Ors v Royal County of Berkshire Polo Club Ltd & Ors

Factual and Procedural Background

The Appellants appealed against an order of Judge Mellor dated 3 November 2023, which dismissed their claim against the Defendants for trade mark infringement and passing off. The original judgment was delivered on 19 July 2023. The trade marks at issue were owned and licensed by the Claimants and registered in multiple jurisdictions including the UK, EU, and several overseas territories. The Defendants included a company operating a prominent polo club in the UK, the widow of the club's founder (now deceased and represented by her personal representative), their son who is the current chairman, the club's former licensing agent, and the agent’s sole director. Claims against other defendants were stayed, leaving these five as the active parties.

The dispute concerned alleged infringement of the Claimants' trade marks by the Defendants through use of various signs, particularly one identified as "Sign 3," used on goods identical to those covered by the trade marks, such as clothing and accessories. Proceedings commenced on 25 June 2018, and the parties agreed that the claims would be assessed under UK and EU trade mark law, with infringement evaluated as of the commencement date. The trial took place over six days in June 2022, resulting in a detailed judgment of 77 pages.

Legal Issues Presented

1. Whether the existence of a "crowded market" of polo-themed brands featuring horse-and-rider logos is relevant to the assessment of trade mark distinctiveness and likelihood of confusion.
2. Whether coexistence agreements between trade mark owners are relevant to the assessment of likelihood of confusion.
3. Whether the judge erred in rejecting the Claimants’ reliance on likelihood of post-sale confusion if likelihood of confusion at the point of sale was not established.

Arguments of the Parties

Appellants' Arguments

• The judge wrongly relied on the existence of other polo-themed trade marks, arguing these were legally irrelevant to assessing the distinctiveness of the Claimants’ trade marks and did not form part of the relevant context for infringement assessment.
• The judge wrongly relied on coexistence agreements between the parties and third parties, contending such agreements should be irrelevant to the likelihood of confusion assessment.
• If the first ground succeeded but did not establish infringement at the point of sale, the judge erred in rejecting the Claimants’ argument for likelihood of post-sale confusion.

Respondents' Arguments

• The crowded market is relevant to the distinctiveness of the Claimants' trade marks, as a greater number of similar marks diminishes distinctiveness and thus the scope of protection.
• Coexistence agreements may provide useful insights into the market and consumer perceptions and are not irrelevant to the global assessment of likelihood of confusion.
• Likelihood of post-sale confusion cannot arise if there is no likelihood of confusion at the point of sale.

Table of Precedents Cited

Court's Reasoning and Analysis

The court began by affirming the legislative framework under the Trade Marks Act 1994 and relevant EU directives, focusing on the requirement of a likelihood of confusion among the public. It adopted the established principles for assessing confusion, emphasizing a global appreciation of all relevant factors and the perspective of the average consumer.

The court reviewed the judge's extensive factual findings, including the market context of multiple polo-themed brands with horse-and-rider logos, and found that the presence of such a "crowded market" reduced the distinctiveness of the Claimants' trade marks. The judge’s rejection of the Claimants' argument that the words "POLO CLUB" were distinctive was upheld.

The court analysed the relevance of coexistence agreements, agreeing with the trial judge that while such agreements do not determine the likelihood of confusion, they may provide useful insights into market perceptions and the views of market participants.

On the issue of post-sale confusion, the court agreed with the judge’s conclusion that without confusion at the point of sale, post-sale confusion cannot arise. The court noted the absence of any error in the judge’s multi-factorial evaluation of the evidence and his application of legal principles.

The court rejected the Claimants' submission that the existence of other polo-themed marks was irrelevant, affirming established case law that distinctiveness is affected by the presence of similar marks in the market. It also rejected the argument that the judge erred by considering coexistence agreements or that the judge failed to consider different consumer perceptions within the relevant public.

The court concluded that the judge’s findings on the lack of likelihood of confusion were supported by the evidence, including the limited instances of actual confusion despite prolonged concurrent trading in some markets, and the overall assessment of similarity between the marks and signs.

Holding and Implications

The court DISMISSED the appeal, affirming the trial judge’s decision that there was no trade mark infringement or passing off by the Defendants.

The direct effect of this decision is that the Claimants’ claims against the Defendants fail. No new legal precedent was established, as the decision applied existing principles of trade mark law and confirmed the trial judge’s careful factual and legal analysis without error. The ruling underscores the importance of market context, distinctiveness, and actual evidence of confusion in trade mark infringement cases.