Intellectual property: Rules from the polo field

The recent case of Lifestyle Equities v Royal County of Berkshire Polo Club [2023] EWHC 1839 (Ch) highlighted several challenges brand owners face with trade mark protection. Specifically, the case considered the impact a “crowded market” has on proving the distinctiveness of brand marks.

The claims

The case dealt with a trade mark dispute between two polo-themed clothing companies. The claimants, owner of Beverly Hills Polo Club, brought an infringement action under s 10(2) and (3) of the Trade Marks Act 1994, alongside claims of passing off and unlawful means conspiracy. They argued that there was a “likelihood of confusion” in various countries between their mark and the Berkshire Club’s sign. 

Both parties used various logos consisting of their respective names, containing the phrase “Polo Club”, accompanied by a depiction of a polo rider on a horse. The defendants argued that the claimant’s marks had existed alongside their branding and other polo brands worldwide for many years. It is important to highlight that this case was the most recent in a number of actions by the claimants against competing polo brands.

Mellor J dismissed all the claims, as the claimants were unable to effectively evidence any infringement. Two elements were considered in the judgment: (i) how the distinctiveness of a mark is assessed in a crowded marketplace; and (ii) the relevance of previous co-existence agreements with third parties. In this case, it is worth noting that although the claimed infringements occurred across multiple countries, both parties agreed that the UK/EU law would apply.

Crowded market/distinctiveness

The defendants argued that for contextual purposes, it was necessary to review other polo-themed brand marks, as these would impact how consumers viewed the claimants’ mark. The claimants argued this would broaden the context too widely. The judge sided with the defendants (citing Specsavers v Asda [2012] FSR 19), stating it was important to review brands involved in a “crowded market” and consider the impact on the distinctiveness of the claimants’ marks.

Assessing the market, Mellor J noted that several clothing brands are polo club themed. Most featured a depiction of a horse and rider, making it hard to view the claimants’ mark as distinctive. He assessed the global likelihood of confusion between the brands, analysing their popularity, presence and sales in the relevant countries, and found that confusion was unlikely.

Following this analysis, he considered that the horse and rider logo did not dominate in either of the parties’ branding. The claimant’s motif was not unique and had co-existed alongside similar branding previously. Therefore, it was unlikely that the consumer would make a link between the respective marks; even if they did, it would not give rise to damage. In a crowded market, actual confusion between the marks would need to be evidenced; the claimants had failed to do so.

Co-existence agreements

Co-existence agreements between the respective parties and Ralph Lauren Polo were submitted in evidence. The claimants maintained that these agreements were irrelevant to the assessment of brand confusion; their existence pointed to brands being in conflict. The court rejected this, advising that such agreements do not necessarily indicate brand conflict but rather that these brands are willing to accept the use of similar marks to a certain extent.

Looking specifically at the co-existence agreements, Mellor J considered them to be a “practical insight into the market for ‘polo’ brands and especially those which feature a polo horse and rider motif”. He held that these agreements implied that Ralph Lauren Polo considered that the differences between the respective marks were substantial enough to avoid confusion between the brands, meaning they could co-exist peacefully. Several other co-existence agreements were also in place between the respective parties and other similar brands.

Unsatisfactory evidence

A further point to note was that Mellor J took issue with the evidence provided by both parties’ solicitors: marginal annotations left within a witness statement were “inaccurate and potentially misleading”; other documents were described as vague, lacking detail, incomplete; and ultimately, the claimants’ witness evidence was unpersuasive. The judge was undoubtedly unimpressed by the presentations before parties even had the opportunity to argue their respective cases. The case is a salutary lesson that advisers should be mindful of how they present evidence to avoid this adverse reaction and put themselves in the best position before the hearing.

In summary, this case makes clear that when a business is part of a crowded marketplace, it will have a substantially harder time establishing the distinctiveness of its trade marks. Businesses should make efforts to be aware of how others in the same market are branding themselves, and if infringement proceedings are raised, actual confusion between brands will need to be clearly evidenced. It also shows the importance of considering brand strategy before entering into co-existence agreements. If businesses enter into such an agreement with a third party, it could work against any future infringement claims if the same topics are covered. Businesses should be mindful of the issues discussed in this matter when considering actioning a trade mark infringement claim.