In a recent judgment, the High Court of England and Wales found that Lifestyle Equities’ trade mark rights in the BEVERLY HILLS POLO CLUB mark had not been infringed by the Royal County of Berkshire Polo Club (defendant).

This case is one of a number brought in recent years by Lifestyle Equities, owner of the BEVERLY HILLS POLO CLUB marks.

Facts
The proceedings related to registrations in the UK, EU and certain overseas territories (Panama, Peru, Mexico and the UAE) of a figurative trade mark consisting of the words “Beverley Hills Polo Club” and a depiction of a polo rider on a horse. Lifestyle Equities alleged infringement under section 10(2) and 10(3) of the Trade Marks Act 1994 and equivalent provisions of the EU Trade Mark Regulation (2017/1001), arising from the defendants’ use of various logos consisting of the words “Royal Country of Berkshire Polo Club” and a depiction of a polo rider on a horse. They also alleged passing off and unlawful means of conspiracy.

Although a number of variations of the parties’ marks had been used over the years, the bulk of the Court’s assessment revolved around the two following marks:

Decision
The claims for infringement, passing off and unlawful means conspiracy were dismissed. The defendants’ trade mark registrations were to be revoked to the extent that they had admitted non-use.

In relation to section 10(2) and Article 9(1)(b) infringement, the judge held that:

• There was a ‘crowded market’ for polo-themed goods, with numerous brands existing alongside Lifestyle Equities’ brand such as Ralph Lauren Polo and the US Polo Association, 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. Trading under the mark in the UK and EU had been insufficient to enhance the distinctive character of Lifestyle Equities’ mark.
• The visual similarity between the marks was not particularly significant and the conceptual similarity was described as slightly above medium similarity. Visual similarity was the most important as the goods in question (clothing and accessories) would be selected primarily on the basis of visual inspection.
• The judge considered territory-specific factors when considering traits of the average consumer and the similarity of the mark and sign in each jurisdiction. Although the sign was slightly more difficult to understand in countries where English was not the principal language, the overall analysis of similarity was not materially different in respect of the overseas territories.
• There was no indirect infringement based on “imperfect recollection” (e.g. consumers recollecting of the two marks being similar or in some way connected). The elements in the mark and the sign, and the crowded nature of the relevant market, militated against anyone seeing the sign as a sub-brand or a fresh, connected brand. A horse and rider motif is relatively common for such brands and did not retain an independent distinctive role in Lifestyle Equities’ mark.
• Passing off also failed: There was no passing off as the parties had agreed that if the trade mark infringement claim failed so did the passing off claim.

Conclusions
It should be noted that Lifestyle Equities’ has previously won numerous cases against the defendant in the UK, EU and worldwide, but failed on all claims in the present case. Given that Lifestyle Equities’ have historically been vigilant in protecting their trade marks to date, we should not be surprised if they seek to appeal this judgement.

The court concluded that the crowded nature of the market meant that consumers were less likely to assume a connection between two brands just because they both contained the words “polo club” and a picture of a polo player on horseback. As a result, the mark was deemed less distinctive and evidence of actual confusion is likely to be required.

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