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Battle of the birds: Jack Wills and House of Fraser in Trade Mark dispute

Written by Saowanee Kristin on 28 February 2014

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Jack Wills, a clothing company with a demographic of affluent 16-24 year olds, took House of Fraser to Court over their use of a trade mark that Wills argued was likely to cause confusion to customers.

Jack Wills’ logo consisted of a pheasant silhouette complete with top hat and carrying a cane; whereas the House of Fraser logo represented a pigeon wearing a top hat and bow tie.

The High Court decided that House of Fraser had infringed Jack Wills’ trade mark.

The two reasons for this were as follows:

  1. The Court found that the infringing logo would give rise to the likelihood of confusion within the public and the’ average consumer’; which was held to be extended to not only those who shopped at Jack Wills but also those who would buy these products as gifts for others. The wide interpretation of the definition ‘average consumer’ was justified by the logo having both an inherent and acquired distinctive character. Therefore, when looking at trade mark disputes and trying to ascertain who is the ‘average consumer’ of those goods or services this definition should not always be limited to their target market.
    1. The Court also held that it was not necessary to evidence a change in consumer behaviour as a result of trade mark infringement. The High Court stated that the Community Trade Mark Regulation does not require evidence of actual detriment, “allowing the use of logical deductions”, the serious risk of detriment is enough.  Consequently, Jack Wills did not need to prove that the use of  House of Frasers logo has damaged their business, only that the risk of doing so was definitively apparent.

Jack Wills’ legal representatives stated: “This case is a paradigm example of a retailer sailing too close to the wind in aping the get-up of a famous brand for a lookalike product. Jack Wills had to take action to preserve the distinctiveness of its famous pheasant trade mark; had it not done so, the floodgates would have opened to a plethora of other clothing brands using emblems of birds wearing top hats and other human adornments. By winning this case, Jack Wills has marked that out as its territory alone.”

This article was written by Saowanee Kristin, who works part time for Lawdit.

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