Feathers fly in trademark dispute
Posted: 5th February 2014
Following an unusual High Court trade mark dispute, ‘Mr Wills’ – the top hat-wearing pheasant logo that helped make fashion label Jack Wills a household name – has pecked to death a confusingly similar pigeon which had featured on a rival retailer’s range of men’s shirts.
Since Mr Wills came off the drawing board in 2007, he has played an important role in boosting the annual sales of Jack Wills Limited to around £40 million. The company launched proceedings after it noticed a pigeon logo, which also sported a top hat, embroidered on ‘Linea’ shirts sold by House of Fraser (Stores) Limited.
The pheasant’s distinctive silhouette is protected by UK and community trade marks and the Court found that House of Fraser's use of the pigeon logo 'took unfair advantage' of Mr Wills’ reputation and had caused 'a subtle but insidious' erosion of the goodwill associated with the artwork.
House of Fraser had insisted that there was no risk of customer confusion. Quite apart from their different species, the company pointed out that the pigeon and Mr Wills face in opposite directions and, whilst both favoured the same headgear, the pigeon carried no cane. Mr Wills was redolent of the gentry and country pursuits, whereas the pigeon was more reminiscent of Trafalgar Square.
The Court accepted that it was 'not open' to Jack Wills to argue that House of Fraser had 'piggy-backed' or tried to 'free-ride' on its goodwill by adopting the pigeon logo. However, noting that 'the human eye has a tendency to see what it expects to see', the Court found that a substantial number of consumers might not spot the difference and would assume that House of Fraser's pigeon was in some way linked to Jack Wills.
House of Fraser had abandoned the pigeon logo before the case came to court – but not before up to 20,000 shirts bearing the pigeon logo had been sold over a 15-month period. The ruling opens the way for Jack Wills to claim damages or an 'account of profits' generated by the trade mark infringement.
Whilst accepting that there were 'both similarities and differences' between the two logos, the Court observed, "Side-by-side comparison is not what matters. In both cases, the concept is not merely a silhouette of an anthropomorphised bird but more specifically a silhouette of a bird with accoutrements suggestive of an English gentleman, in particular a top hat."
Noting the 'obvious resemblance' between Mr Wills and the House of Fraser pigeon, the Court found that there was ‘a reasonable degree of visual similarity and a high degree of conceptual similarity' between them and that there was ‘a likelihood of confusion on the part of the average consumer’.
"The effect of House of Fraser's use of the pigeon logo will have been to cause a subtle but insidious transfer of image from the trade marks to the pigeon logo, and hence from Jack Wills' goods to House of Fraser's goods, in the minds of some consumers, whether that was House of Fraser's intention or not."
Although House of Fraser had not actively advertised the pigeon logo, Mr Justice Arnold concluded, “I consider that it was a classic case of a retailer seeking to enhance the attraction of its own brand goods by adopting an aspect of the get-up of prestigious branded goods, in this case an embroidered logo.
“House of Fraser was seeking to influence the economic behaviour of consumers of Linea menswear. I see no reason to think that it will not have succeeded in that endeavour…House of Fraser had no justification for such conduct. Thus I conclude that House of Fraser did take unfair advantage of the reputation of the trade marks.”