The companies that own and operate the ‘Beverly Hills Polo Club’ (which I'll call “BHPC”) brand have failed in their appeal of the decision at trial dismissing their trade mark infringement claim against the Royal County of Berkshire Polo Club (which I'll call “RCBPC”). The decision is generally more helpful to defendants than brand owners, provides an important reminder to brands to enforce their trade marks, and deals a warning about co-existence agreements.

The trial judgment is a behemoth, and is somewhat difficult to summarise in such a short post. For present purposes, it suffices to say that (1) BHPC owns the below trade mark containing a polo player on a horse, (2) RCBPC used the below sign similarly featuring a polo player on a horse, (3) that there were numerous third parties also with logos of polo players on horses, including some of which who had entered into co-existence agreements with BHPC, and (4) the trial judge rejected BHPC's claim that the use of RCBPC's logo would give rise to a likelihood of confusion or otherwise take unfair advantage of BHPC's trade mark. 

BHPC Mark:

RCBPC logo:

BHPC appealed the decision on the likelihood of confusion, arguing that the judge should not have taken into account other polo-player-on-horse signs being used on the market or the co-existence agreements between BHPC and others, such as Ralph Lauren. 

The Court of Appeal, with Lord Justice Arnold giving the main judgment, rejected the appeal. In particular, he found that:

• Third party uses of similar signs to the trade mark diminishes the distinctiveness of a trade mark and therefore is relevant to the assessment of how the average consumer would perceive both that mark and the sign in dispute. 
• Co-existence agreements can be relevant to the assessment of the scope of trade marks; the court must take into account all factors relevant to the circumstances of the case, and co-existence agreements form part of that background. Possibly more contentious is the judge's statement that such agreements may indicate what the parties consider to be acceptable use.
• Where there is no likelihood of confusion between the marks at the point of sale (due to differences between the marks and the market context), there would be no likelihood of post-sale confusion.

This is, to my mind, a sensible decision on its facts. There are numerous polo-player-on-horse signs on the market, and there is a reason for that: it alludes to a sport with cachet and associations of wealth and luxury. A court required to decide on infringement should be able to take all relevant circumstances into account, and the presence of numerous similar signs on the market, at least one of which is far better known than the one being relied on, is plainly relevant.