Lonsdale Sports Ltd v Erol 2013: High Court Allows Appeal

Lonsdale have been successful in their appeal against a mark they considered would take unfair advantage of, or be detrimental to, the distinctive character or repute of the Londsdale marks pursuant to section 5(3) of the Trade Marks Act 1994.

The facts

Londale Sports Ltd, a company long established in the sale of sports clothing, owned a number of trade marks consisting of:

• The word ‘Lonsdale’ with an elongated letter ‘L’, in a cinemascope style font.
• The word ‘London’.

In Febuary this year Erol (a sports clothing retailer) applied to register a trademark consisting of:

• The word ‘London’ with an elongated letter ‘L’ in cinemascope style font.
• AÂ British flag.
• The word England.
• The word ‘nas’.
• A Nike style swoosh.

The Opposition

Lonsdale opposed the registration based on the following sections of the Trade Marks Act 1994 (TMA 1994):

Section 5(2)(b)

A trade mark shall not be registered if, because it is similar to an earlier trade mark and is to be registered for goods or services identical with those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

Section 5(3)

A trade mark that is similar to an earlier trade mark shall not be registered if, or to the extent that, the earlier trade mark has a reputation and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

The opposition failed, the hearing officer when carrying out her assessment selected two of Lonsdale’s marks (one with the elongated ‘L’ on its own and one with the word ‘Lonsdale’ on its own in the cinemascope style font, with the elongated ‘L’) and noted:

Section 5(2)(b) TMA 1994 (similar mark/identical goods services)

• There was a modest degree of visual similarity and a low degree of aural similarity.
• The marks were conceptually distinct, i.e. Lonsdale being a surname and London a location.
• But accepted that the ‘Lonsdale’ mark with the elongated ‘L’ in the cinemascope style had a reputation.
• Considered that there were conceptual differences in the marks that outweighed any other similarities.
• Concluded there was no likelihood of confusion between the marks despite them being used on identical goods?

Section 5(3) TMA 1994 (similar mark leading to unfair advantage)

• In order for the applicants mark to gain an advantage or produce a detriment, it must affect the economic behaviour of the public i.e. make the marketing and selling of Erol’s goods easier due to its similarities to Lonsdale’s marks.
• On the evidence available, she didn’t think it was clear what advantage Erol would gain as there was no evidence of particular intention.
• With regards to dilution of the Lonsdale marks, she didn’t consider that the capacity for Londsdale to distinguish their goods would be diminished to a level that impacted the buying behaviour of the relevant public.

The Appeal

Lonsdale successfully appealed this decision this month on some of the following grounds:

1. There was a failure to consider the ‘Lonsdale’ mark that also included the word ‘London’, as this led to further visual, aural and conceptual similarities between the marks.
2. There was a failure to consider the whole “family” of the Lonsdale marks.
3. There was an inaccurate application of the relevant tests.

Unfair advantage/detriment section 5(3) TMA 1994

The appeal judge held that the hearing officer should have found the requisite link between the marks on the following grounds:

• The goods Erol proposed to use the mark on were identical.
• The relevant public to whom the goods would be sold had a near identity.
• The use of the Lonsdale trade marks on a vast variety of clothing, footwear and headgear over a number of decades had a positive effect on the distinctive character of the marks.
• At least the elongated ‘L’ and the cinemascope style font were present in Erol’s proposed mark.
• Lonsdale had a long established and successful business.

In conclusion it was held there existed a likelihood that the use of Erol’s mark would take unfair advantage of or be detrimental to the distinctive character of the Lonsdale trade marks.