La crowded art riduce il tasso di distintività del marchio azionato

Alessandro Cerri in IPKat ci propone High CourT of Justice inglese 19 luglio 2023, Case No: IL-2018-000115, giudice Mellor, per cui il primo dei due marchi seguenti non è violato dal secondo.

Le differenze sono modeste dato che fantino e cavallo non hanno un ruolo dominante (§ 264) e che il settore delle magliette polo è assi affollato di marchi analoghi.

Il passo più interessante è quello circa la valorizzazione della crowded art: essa conta circa il giudizio di distintività del segno azionato, che si riduce se il settore è pieno di prodotti affini marcati in modo assai simile.

Mi pare esattissimo.

<<66  As far as I could tell, the Ds did not engage with the Cs’ arguments as to context but it seems to me that these submissions confuse two separate but related concepts and involve a non-sequitur between the first two and the last two points. The concepts are related in the sense that they both involve things that impinge on the mind of the average consumer and (may) influence the result.

67. There are sound policy reasons for not taking an over-expansive view of the context of the allegedly infringing use. These can be readily understood in the examples which the Deputy Judge had in mind in [24]. The use of ‘Fake Rolex’ or ‘Imitation Louis Vuitton’ does not escape infringement of the famous marks.

68. Although, as I have indicated, the Cs suggested this case was all about context, the Ds put their case differently. Instead, the Ds submitted the key here was to focus on the nature of the mark, the message it conveys to the consumer and hence on its distinctive character. Implicitly, the Ds therefore agreed with the notion that the relevant context was ‘local’, and so do I.

69. Taking a step back from the detail, if I assume for a moment that RL Polo, USPA and all the other third party ‘polo’ brands had never existed and BHPC was the first ‘polo’ brand which created the market and Sign 3 was freshly launched onto the market (for this purpose, assume UK), the infringement action would look very different – in short, it would be far more likely to succeed.

70. Instinctively, the long-standing presence of RL Polo, USPA and possibly other third party ‘polo’ brands must create a different situation. I agree with the Ds that it is necessary to assess the nature of the Cs mark, what it conveys to the average consumer and its distinctive character in this market which can be characterised as somewhat crowded with ‘polo’ themed brands. This is not a ‘context’ issue, and the distinction is clear: context is concerned with an examination of the use complained of, whereas the Ds are saying that it is the Cs mark which brings to that examination the relevance of other ‘polo’ brands in the market, provided they impinge on the way in which the average consumer views and recalls the Cs’ mark>>

<<.74. Once again, it is apparent that Marcus Smith J. considered that the relevance of other ‘polo’ brands went to distinctiveness or the lack of it. I should make it clear that the point I derive from Greenwich Polo is additional support for the point of law that the relevance of a ‘crowded market’ is to distinctiveness of the registered trade mark in issue. I should also emphasise that, whilst that case involved the same Cs’ registered trade marks as in this case, the Greenwich Signs were very different from those I have to consider. Furthermore and most importantly, I have received different evidence in this case – I have not received any evidence from Mr Durbridge>>.