What’s in a name? – Aspinal of London Ltd v Pom Pom London Ltd

The well-known British leather goods designer, Aspinal of London Limited (Aspinal), and the licensor of one of its trade marks, Mayfair Perfumes Limited, have issued a claim in the High Court against online handbag retailer Pom Pom London Limited (Pom Pom). Joined personally as defendants to the claim are two of Pom Pom's directors and founders, described by Aspinal as the controlling minds of Pom Pom's activities.

Claims made by Aspinal

The claim concerns the alleged infringement of Aspinal's registered 'MAYFAIR' trade marks under which it manufactures and sells a range of handbags, together with alleged passing off. The Mayfair collection is described on Aspinal's website as its "most iconic family", with Aspinal noting in its particulars of claim the popularity of the brand amongst celebrities including the Princess of Wales, Jennifer Lopez, Gigi Hadid and Jenna Coleman, also referencing articles about the Mayfair collection in popular magazines such as Vogue and Harper's Bazaar (albeit the majority of these post-date the introduction of Pom Pom's Mayfair range).

An image of the classic Aspinal Mayfair handbag appears below.

The acts complained of relate to Pom Pom's sale of a leather handbag range which was previously known as its Mayfair collection (recently being renamed the 'Original' collection).

Aspinal accuses Pom Pom of causing detriment to its UK trade marks and obtaining an unfair advantage by seeking to knowingly "ride on the coat-tails of [Aspinal's] reputation" and the MAYFAIR trade mark, not least given that it claims Pom Pom's Mayfair collection has become its biggest selling range.

Images of the Pom Pom bags formerly being advertised under the Mayfair name appear below.

The case for infringement

To be successful in its trade mark infringement claim, Aspinal is required to show that Pom Pom used in the course of its trade either:

• a sign identical to the 'MAYFAIR' trade mark in relation to goods which are identical to those for which the trade mark is registered (s.10(1) Trade Marks Act 1994 (TMA);

• a sign identical or similar to the 'MAYFAIR' trade mark in relation to goods which are identical or similar to those for which the trade mark is registered, where there exists a likelihood of confusion including a likelihood of association on the part of the average customer (s.10(2) TMA); or

• a sign identical or similar to the 'MAYFAIR' trade mark, where the trade mark has a reputation in the UK and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark (s.10(3) TMA).

Aspinal's primary argument is that the sign used by Pom Pom is identical to the 'MAYFAIR' trade mark, and is used in respect of identical goods (handbags). If this ground applies, it is a straight forward legal test with no other elements to prove and so will no doubt be a focus at trial for Aspinal (should the claim not settle at an earlier date).

In the alternative, Aspinal argues that the sign used by Pom Pom and/or the products in relation to which it has used its sign are similar, and (i) that there is a likelihood of the average customer confusing the products (being an integral part of the test also for passing off), and/or (ii) that this takes unfair advantage of, or is detrimental to, the distinctive character or repute of the 'MAYFAIR' trade mark.

Likelihood of confusion / association

Whether or not the contended mutual use of the Mayfair sign is likely to give rise to an association in the mind of the public between Aspinal's and Pom Pom's products needs to be considered in the context of the wider market. A finding that use of the Mayfair sign gives rise to such an association could be dispelled for example if Pom Pom can show that the term is commonly used for handbag ranges or individual handbag names offered for sale by a number of other retailers.

Unfair advantage and detriment

To succeed in a claim under s.10(3) TMA, Aspinal must show unfair advantage and/or detriment caused to the character or reputation of its registered trade mark.

With regards to taking unfair advantage of Aspinal's trade mark:

• Aspinal relies on a podcast interview in which one of Pom Pom's directors reveals that the decision to diversify into leather and handbags was driven by his mother, who also played a big part in the product design team. Aspinal allege that the director's mother had specific knowledge of Aspinal's products, having made at least seven purchases from Aspinal between 2015 and 2019.

• Aspinal points out that the name of Pom Pom's second handbag range is called the 'City' collection; 'City' being the name of another of Aspinal's flagship product ranges.

• Aspinal highlights the use of the word 'London' in Pom Pom's name, argued to reflect Aspinal's reference to London in its own name and brand heritage.

• Aspinal claims that Pom Pom has benefited from a rapid growth in turnover, with the director stating in the podcast interview that the business turnover has grown from £38,000 in 2020 to £24 million in 2023 (with the Mayfair and City ranges contributing to 75% of Pom Pom's revenue).

In respect to detriment caused to Aspinal's trade marks:

• Aspinal claims that the association between Aspinal's and Pom Pom's products in the mind of the public damages the reputation of the Mayfair mark because Pom Pom's products are, it states, mass-produced and of a lesser quality.

• Further, Pom Pom's use of the Mayfair sign dilutes the distinctive character and/ or reputation of the Mayfair registered trade mark in that the Mayfair mark's ability to identify Aspinal's product is weakened.

• Pom Pom's conduct has required Aspinal to spend further money on advertisements which Aspinal would not have had to incur had Pom Pom not increased the competition for sponsored advertisements linked to keywords relating to the Mayfair word (including the term 'Mayfair bag').

However, whilst Aspinal states that it currently spends around £700,000 per year in respect of promotion and marketing of the Mayfair range, the amount of the spend in previous years (and therefore the value of the increase which it claims to be attributable to counter Pom Pom's conduct) is unclear.

Our thoughts

It's interesting to see that Aspinal has issued its claim in the High Court rather than the Intellectual Property Enterprise Court, the usual forum for trade mark infringement and passing off claims where the damages sought are less than £500,000 and the trial will last no more than two days.

This may indicate that Aspinal believes its claim to have a value of much more than £500,000. The move strategically also applies pressure on Pom Pom to settle by exposing it to the greater adverse costs consequences tied to High Court claims should Pom Pom fail successfully to defend the claims against it. Pressure is also increased by having jointed two of the individual directors personally with the contention that they are jointly liable with Pom Pom should the company be held to have engaged in wrongdoing.

In relation to the value of its claim, Aspinal claims an inquiry as to damages or alternatively an account of Pom Pom's profits. It will be interesting to see how the parties argue and a court deals with the question of such relief (should Aspinal be successful and the case proceeds to an assessment of quantum), noting that on its own claim Aspinal's sales have more than doubled since Pom Pom's introduction of the Mayfair range (albeit the level of its profit has not been particularised). It will be open to Aspinal to argue that the appropriate way to assess any compensation to be awarded to it is the sum it would notionally have charged Pom Pom for a licence to use the 'MAYFAIR' trade mark (ideally by reference to other comparable licence agreements which Aspinal may have entered into).

We will be keeping an eye on the development of this case as it proceeds to trial. However, if you would like to discuss any of the issues raised in any more detail, please do feel free to contact us using the details below.