14 January 2025
UK Court of Appeal Decision Highlights Limits of Trade Mark Confusion in Crowded Markets
The UK Court of Appeal recently upheld a decision in Lifestyle Equities v Royal County of Berkshire Polo Club, clarifying the role of crowded markets and coexistence agreements in assessing trade mark confusion. The case revolved around Lifestyle’s claim that Berkshire Polo’s use of a polo-themed sign infringed its trade marks in multiple jurisdictions, including the UK and EU.
Key Takeaways:
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Crowded Markets Impact Distinctiveness: The Court found that in industries with widespread use of similar trade mark components, such as horse and rider motifs for polo-themed goods, the distinctiveness of individual marks diminishes. This reduced distinctiveness lowers the likelihood of consumer confusion.
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Coexistence Agreements as Evidence: The Court agreed that coexistence agreements, such as those between the parties and Ralph Lauren, can provide insight into what is considered acceptable in the market. However, they are not determinative and should be used cautiously to avoid misinterpretation.
Practical Impacts:
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For Trade Mark Owners: Rightsholders should act swiftly to enforce their marks, as allowing similar marks to proliferate can weaken their distinctiveness and protection.
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For New Entrants: Businesses entering crowded markets may face fewer concerns about using common design elements already widely adopted by competitors.
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Coexistence Agreements: While valuable for settling disputes, these agreements may influence future proceedings, highlighting the need for careful drafting and consideration of potential long-term implications.
This case underscores the importance of evidence in trade mark disputes, particularly in industries with low-distinctiveness components, and the nuanced role coexistence agreements can play in assessing confusion.
