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‘Polo’ wins enhanced distinctiveness”chukkers” to offset weak distinctive character

In this EUTM case the General Court (GC) decided for The Polo/Lauren Company LP, concluding that alleged weak distinctive character of the earlier mark in regard to certain goods was amply compensated by the enhanced distinctive character that the earlier mark has acquired through the use in trade.

1st Chukker: In 2014, the EUTM applicant sought to register the word “HPC POLO” for goods in class 18 and 25 among others. The Polo/Lauren Company LP filed an opposition pursuant to Article 8.1(b) and 8(5) EUTMR (now Regulation 2017/1001) based on its earlier EUTM “POLO”, covering goods in class 18 and 25. Due to the identity between the goods and the similarity of the signs the Opposition Division (OD) found a likelihood of confusion and upheld the opposition on the basis of Article 8.1(b), without considering the grounds of opposition of Article 8.5.

2nd Chukker: The applicant brought an appeal with EUIPO. The First Board of Appeal upheld the opposition but, differently form the OD, based its decision in part on Article 8.1(b) and in part on Article 8.5. It found that the earlier mark POLO had, in relation to “clothing”, a distinctive character enhanced by its recognition by the public, so it concluded for the existence of a likelihood of confusion in regard to all the goods concerned with the exception of “whips, harness and saddlery” (not covered by enhanced distinctive character). As far as these goods are concerned, the BoA ruled that the contested mark would still take unfair advantage of the earlier mark’s reputation, within the meaning of Article 8.5. Therefore the BoA eventually upheld the opposition with reference to these goods too.

3rd Chukker: The applicant filed an action with the GC relying on a single plea in law: infringement of Article 8.1(b). The GC noted that the applicant had not raised any plea against the part of the contested decision related to Article 8.5 and the goods “whips, harness and saddlery”. Consequently the Court declared the action partially inadmissible, namely as concerns the part of the contested decision in which the BoA applied Article 8.5.

Based on Article 8.1(b), the applicant complained that the BoA did not duly take into account the presence, in the contested mark, of the differentiating element “HPC”. The GC rejected the claim, stressing that the element HPC had been taken into account, leading to a finding of similarty between the marks. Were it otherwise, the BoA would have considered the signs identical. In any event the element HPC was not considered sufficient to introduce differences to offset the similarities found in the common element POLO.

The applicant also claimed that the BoA was wrong in not assessing that the word POLO has a weak distinctive character in regard to the goods concerned, given that that word refers to a specific type of apparel. The GC, however considered this argument ineffective as , firtly, case-law has recognised that the expression “polo club” has a normal, or even enhanced, intrinsic distinctive character (T‑581/13, paragraph 49) and secondly, the word POLO, being a registered EUTM, necessarily retains a minimum degree of distinctive character and its validity cannot be challenged in opposition proceedings. Thirdly, and most significantly, the evidence submitted by the intervener demonstrated intensive use of the earlier mark for clothing. Even though the evidence submitted included the mark RALPH LAUREN, the intensive use of the earlier mark POLO was beyond doubt as, whilst being associated with other marks, POLO was positioned above the other sign, was in a larger font and, consequently, played an independent role with respect to the other marks.

The GC concluded therefore that the alleged weak distinctive character of the earlier mark for certain goods was amply compensated by the enhanced distinctive character that the earlier mark has acquired through the use in trade. The action was therefore dismissed in its entirety and we don’t’ expect to see further chukkers being played in this match. Perhaps the key takeaway from this case then is its precedent value for good trademark enforcement of less distinctive brands that can rely on well-presented evidence of reputation.

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