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21 January 2016Trademarks

Spitting feathers: an imaginary Jack Wills v House of Fraser appeal

Counsel for clothing brand Jack Wills and department store House of Fraser may have been given food for thought as arguments for a hypothetical trademark case were put forward at a mock appeal.

Law firm Bristows played host to a hearing where imaginary arguments were considered for House of Fraser should it appeal against a 2014 English High Court ruling that its pigeon logo infringed Jack Wills’ trademarked logo of a pheasant.

Organised by the Institute of Trade Mark Attorneys, the event on Tuesday, January 19 also saw participants imagine what Jack Wills could say to deter any possible grounds for appeal.

Guy Tritton and Amanda Michaels, both barristers at Hogarth Chambers, put their workplace connection to one side to take on the roles of House of Fraser and Jack Wills representatives.

Sir John Mummery, a former judge at the English Court of Appeal, revisited his former role to keep a watchful eye over the proceedings and hear the arguments both for and against.

The original case—a real dispute—saw Jack Wills complain that its logo (known as the ‘pheasant mark’), a profile of a pheasant wearing a top hat with a cane in its claw, had been infringed by House of Fraser’s use of a different logo in its Linea range of clothes.

House of Fraser’s logo showed a profile of a pigeon wearing a top hat.

Mr Justice Arnold, in a judgment handed down in January 2014, held that the House of Fraser pigeon was likely to cause confusion with Jack Wills’ pheasant mark.

Opening proceedings, Mummery offered some words of advice and said it was important to remember that an appeal was “not the same as a retrial”.

“You cannot appeal against reason,” he told guests, “you can only appeal against an order and try to prove that the order was wrong because the judge got his reasons wrong.”

He then handed over to the two parties to make their arguments.

Tritton, ‘representing’ House of Fraser, said that Arnold erred in his approach on who the “average consumer” was when considering whether “unfair advantage” had been taken.

Furthermore, Tritton said Arnold had failed to identify any factor that made the advantage “unfair”.

In his original ruling, Arnold agreed that House of Fraser and Jack Wills targeted different age groups.

One of Tritton’s arguments was based on the premise of a defendant “free riding” on the reputation of a registered mark, as identified under article 9(1)(c) of Regulation (EC) No. 207/2009.

“As a matter of logic, if a consumer of the defendant’s [House of Fraser] goods is unfamiliar with the pheasant mark, then when purchasing the Linea products the reputation of the pheasant mark cannot play a role in that consumer’s purchasing decision, and thus no unfair advantage can be taken,” Tritton said.

Tritton also cited a line in the judgment which made reference to House of Fraser enhancing the attraction of its own goods by adopting a logo used by “many prestigious brands”—but not Jack Wills specifically.

But Michaels, ‘representing’ Jack Wills, said that this part of the judgment had been misread and that the grounds for appeal were “misconceived”.

“The learned judge [Arnold] did not say that House of Fraser had adopted a logo commonly used by many others, but that it had adopted the kind of logo used by high-end brands—in this case, Jack Wills’ prestigious logo to enhance the allure of its goods,” Michaels said.

Mummery stopped short of indicating whether he would, if this were a live hearing, grant the appeal, but offered three points to remember in any appeal proceeding: concentrate on the point you are trying to make; concentrate on the text of the original judgment; and that a respondent should never forget that it was the winner in the previous case.

The Jack Wills v House of Fraser moot appeal took place at Bristows law firm in London on January 19.

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