Lifestyle Equities v Santa Monica Polo Club: most polo logos infringed, newest one escaped confusion claim
Lifestyle Equities CVvSanta Monica Polo Club
- Court
- High Court
- Judgment
- 21 December 2017
- Citation
- [2017] EWHC 3313 (Ch)
Even a redesigned logo can infringe if it is built to keep earlier brand goodwill alive.
The owner of the Beverly Hills Polo Club trademarks sued a rival using a series of "Santa Monica Polo Club" polo logos on clothing. The claimants won on most of the logos, including the newest one, though on different legal grounds.
What happened
Lifestyle Equities owns registered EU and UK trademarks for "Beverly Hills Polo Club", showing a polo player on a running horse. It licenses the brand for clothing. The defendants traded as Santa Monica Polo Club and had used a one-horse logo from 2008, a two-horse logo from 2012, and, after this case started, a three-horse logo from September 2016. Lifestyle Equities said all three versions copied its branding closely enough to confuse shoppers and damage its reputation. It also claimed the defendants had broken a 2014 settlement agreement. The defendants counterclaimed that a warning letter sent to a shared retail customer, TK Maxx, was an unjustified threat.
What did the court decide in Lifestyle Equities CV v Santa Monica Polo Club?
The court found a likelihood of confusion, and passing off (using a similar enough mark to mislead customers into thinking the goods are connected to the claimant), for the one-horse and two-horse logos. The three-horse logo was visually different enough to avoid that particular finding. However, the court held that the three-horse logo was still infringing under the reputation-based provisions of the Trade Marks Act 1994, because it was adopted deliberately to keep the goodwill of the earlier, infringing branding going. The alleged 2014 settlement was not accepted by conduct, so the contract claims failed. The threats counterclaim failed too, because the underlying infringement claim was justified.
What we learned from this
- What I'd take from this is that swapping out a logo doesn't automatically clear the slate. The court looked at why the new design was chosen, not just how different it looked.
- If you're redesigning a logo to move away from a dispute, keep a clear record of why you chose the new design and avoid any deliberate continuity with the old one.
- A warning letter to a shared customer isn't automatically an unjustified threat if the underlying infringement claim turns out to be justified.
- Settlement talks don't become a binding contract just because one side thinks they do. Conduct has to show clear acceptance.
Things to be aware of
- The reputation-based finding against the three-horse logo depended heavily on its link to the earlier infringing logos and the clear intent to preserve brand continuity. A genuinely independent new design might not be treated the same way.
- Avoiding a likelihood-of-confusion finding doesn't mean a logo is safe if the brand being copied has a strong reputation, since different legal tests can still catch it.
- This judgment predates later Supreme Court rulings in the same wider dispute about when company directors can be held personally liable.
The businesses involved
Lifestyle Equities CV
Owner of registered EU and UK trademarks for the Beverly Hills Polo Club brand, showing a polo player on a running horse, licensed for use on clothing.
Santa Monica Polo Club Ltd
Registered in England in September 2015 and still active, though recorded as a dormant company on Companies House with no UK trademarks on the register. Traded as a clothing brand using a series of polo themed logos since 2008.
- Companies House
- 09797786 Active
- Incorporated
- September 2015
- Registered office
- Manchester
- Business activity
- Dormant Company
- UK trademarks
- 0
What others said about it
- Stobbs highlights that the wider litigation put a spotlight on when a company director can be made personally liable for trademark infringement committed by their business.Source: Iamstobbs, July 2024
- The Global Legal Post calls the later Supreme Court ruling a setback for brand owners, since it sets a clear knowledge threshold before directors must pay back profits.Source: The Global Legal Post, June 2024
- RPC points out the Supreme Court's test affects not just liability but how any infringement profits are actually calculated.Source: RPC international law firm, July 2024
- Business Matters reports that a related group company later overturned a damages award in this same long running dispute.Source: Business Matters, May 2026
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This page is for information purposes only and does not constitute trademark advice or guidance. Summary drafted with AI assistance from the published judgment and checked by The Trademark Helpline (how we write these). Judgment: [2017] EWHC 3313 (Ch) on Find Case Law, published under the Open Justice Licence. Company details from Companies House; trademark counts from the UK trademark register. Last reviewed 27 October 2026. Report an error.
