In recent proceedings in the High Court, Mr Justice Arnold ruled that House of Fraser's Linea pigeon logo was likely to cause confusion with Jack Wills' pheasant logo in the mind of the average consumer.
The Jack Wills logo - a pheasant wearing a top hat an carrying a cane - is "intended to protect a brand image which conveys a particular lifestyle to which purchasers of its clothing aspire". House of Fraser's use of a side profile of a pigeon wearing a top hat and bow tie was found to be an infringement of the Jack Wills registered Mark.
The Judge noted that other bird logos, such as the Armani and Lyle & Scott eagles and the Original Penguin, are not adorned with human accessories and the inference was that House of Fraser was taking unfair advantage of the reputation of the Jack Wills Marks.
He went on to say that a side-by-side comparison is not what matters but what the average consumer would remember of the Jack Wills pheasant trademark when confronted with the House of Fraser pigeon logo, particularly in embroidered form, such as on the shirts produced by both manufacturers. The logo had both inherent and acquired distinctiveness.
Thus the pigeon would have assisted House of Fraser to increase the attraction of its goods in circumstances where House of Fraser did not undertake any advertising or promotion of those goods.
Interestingly, consideration was given to the "average consumer", the argument being that House of Fraser was favoured by an older customer than the 16-24 year old devotee of Jack Wills (as worn by One Direction). It was ruled that the average consumer could include the purchaser of clothing for others as well as those making their own purchases. The average consumer varies in age and socio-economic class, so this argument was not a ground on which infringement could be avoided.
For further information on protecting your brand and to ensure you do not fall foul of others' registered trademarks, contact Tony Catterall, Head of Intellectual Property, on 01254 297900 or via email at firstname.lastname@example.org.