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Sunday, 29 March 2015

Polo not the same as football, but Royal Berks give Yanks a partial whipping

It's the polo season again in Luxembourg, which hosts a forum that may have seen more POLO-related litigation than anywhere else in Europe, and possibly beyond (POLO cases that have come before the European Union's top courts so far can be seen here). The latest is Case T 581/13 Royal County of Berkshire Polo Club v OHIM - Lifestyle Equities (Royal County of Berkshire POLO CLUB), a decision rendered last Thursday by the General Court of the European Union in another POLO-related dispute, this time involving a Community trade mark (CTM) application [it seems to this Kat that the word "polo" has the same effect on brand owners as catnip has on cats -- its appeal is irresistible] The story behind the ruling runs like this:

In January 2011, the Royal County of Berkshire Polo Club Ltd ('RCB') applied to register as a CTM the figurative sign reproduced, above right, for inter alia, ‘spectacles, spectacle cases, spectacle frames, spectacle glasses, sun glasses; and accessories therefor’ (Class 9); ‘watches, jewellery, precious stones, precious metals, goods coated in precious metals’ (Class 14); ‘leather goods; imitation leather goods; trunks, travel bags, umbrellas, parasols, whips, harnesses, saddlery, walking sticks’ (Class 18) and ‘articles of clothing, footwear and headgear’ (Class 25). Lifestyle opposed, basing its opposition on four earlier figurative CTMs, all of which were represented by the sign which is reproduced on the left. As luck would have it, Lifestyle's marks were registered for pretty much the same goods as those for which RCB sought to register its CTM (the finding that the parties' goods were identical was not challenged).  Said Lifestyle, applying Article 8(1)(b) of Regulation 207/2009 on the Community trade mark, there was a likelihood of confusion of the relevant consumers on account of the similarity of the respective marks and the identity of goods.

Not much fun without the whip and
harness, not to mention the saddle ...
The Opposition Division rejected the opposition in its entirety. However the Second Board of Appeal uoheld the opposition with regard to all the goods for which RCB sought registration. Said the Board, the goods at issue were everyday consumer goods and were directed at the general public of the European Union, whose level of attention was normal; the image of the polo player, and the words ‘polo club’, in the two signs in question had an inherent enhanced distinctiveness in relation to the goods in Classes 9, 14, 18 and 25 covered by them; the signs at issue had some visual similarity, a degree of aural similarity (which the Board did not further define) and significant conceptual similarity. Since the earlier marks had an average distinctiveness, the Board held that there was a likelihood of confusion between the marks at issue.

Now it was RCB's turn to appeal. RCB applied to the General Court for the annulment of the Board's decision on two grounds: (i) that the reasoning given by the Board was inadequate and (ii) that it was wrong anyway.

The General Court gave the judgment of Solomon, upholding the Board's decision for most goods but annulling it to the extent that it refused the CTM for ‘whips, harness, and saddlery’. Here, in a nutshell, is what the Court said:

Adequacy of Board of Appeal’s statement of reasons

The General Court had no problem finding that the Board's statement of reasons was perfectly adequate, adding that the duty to state reasons for decisions is an essential procedural requirement, the reasoning of a decision consisting in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, those errors vitiate the substantive legality of the decision, but not the statement of reasons, which may be adequate even though it sets out reasons which are incorrect.

Alleged misapplication of Article 8(1)(b) of Regulation 207/2009

The Board was correct in finding that the goods of the respective parties must, in the absence of further details concerning their possible status as luxury goods, be regarded as goods for everyday consumption and as directed at members of the general public, who are not expected to pay a particularly high degree of attention to them. The Board was therefore correct to find that the level of attention of the relevant public was normal [Katnote: believe it or not, the goods in question, which are deemed to be 'goods for everyday consumption' and not luxury goods in the absence of evidence to the contrary, include 'jewellery, precious stones, precious metals, goods coated in precious metals'].

Distinctiveness of the image of a polo player and the words ‘polo club’

The Board of Appeal, relying, directly or by analogy, on the judgments of 21 February 2006 in Cases T-214/04 Royal County of Berkshire Polo Club v OHIM — Polo/Lauren (ROYAL COUNTY OF BERKSHIRE POLO CLUB) [noted here by the IPKat] and T-376/09 POLO SANTA MARIA, EU:T:2011:225, found that the image of a polo player and the words ‘polo club’ had an inherently enhanced distinctiveness in relation to the goods in this opposition, because that image and those words had an imaginative content in relation to those goods, as they did to the goods involved in the cases that gave rise to those judgments. RCB submitted that the image of a polo player and the words ‘polo club’ was descriptive of the sport in question and of the place where it is played. In POLO SANTA MARIA, the General Court found that the image of a polo player had an enhanced distinctiveness in relation to, inter alia, the Class 18 and Class 25 goods pertinent to this opposition, but with the exception of ‘whips, harness and saddlery’ in Class 18, relying on the fact that the goods other than ‘whips, harness and saddlery’ were not directly linked to the playing of polo and that, in that case, the opposing party had proved to the requisite legal standard that the relevant public was familiar with its mark. Thus the Board was wrong to hold here that POLO SANTA MARIA supported a finding that the intrinsic characteristics of the sign were sufficient on their own to endow the image of a polo player and the words ‘polo club’ with enhanced distinctiveness in relation to the Class 25 goods at issue. The Boards finding relating to the enhanced inherent distinctiveness of the image of a polo player and the words ‘polo club’ could not therefore be upheld in its entirety, since the image and those words had
(i) weak inherent distinctiveness in relation to ‘whips, harness and saddlery’ in Class 18, given their close connection to the playing of polo, 
(ii) normal inherent distinctiveness in relation to the Class 25 goods in this action, given that they could be used for polo playing, although there was nothing in their description to the effect that they related to goods specifically designed for that purpose and 
(iii) inherent distinctiveness which was more enhanced, and at the very least normal, in relation to the other goods in this action, given that they had no connection with the playing of polo.
In terms of comparison of the marks, the Board's decision could not be faulted. As for the conceptual comparison, the signs did share a high degree of conceptual similarity, in so far as each referred to a polo club and displayed a similar device of a polo player. Even if, notwithstanding the arrangement of their word elements, the relevant public were to associate those word elements with two different polo clubs, the degree of similarity would be only marginally reduced in so far as both signs would still continue to refer to the idea of polo playing, albeit at different clubs. There was nothing to suggest that the non-English speaking public understood the meaning of the word element ‘Royal County of Berkshire’ in RCB's mark. Nor could any support for the application for annulment be found in the argument that there was no likelihood of confusion between the marks of different football teams.  Apart from the fact that this was wholly irrelevant, RCB did not put forward any evidence at all as grounds for concluding that it was possible to compare the general public’s knowledge of polo with its knowledge of football; nor did RCB explain how the two polo clubs concerned in this case would be comparable, in the eyes of that public, to football teams.

The likelihood of confusion

As for ‘whips, harness and saddlery’, the similarity between the signs was reduced significantly by the fact that their common elements had low inherent distinctiveness in relation to those goods. For that reason, the earlier marks must be regarded as having a low inherent distinctiveness in relation to those goods. Further, those goods were more likely to be purchased by the relevant public with the help of a specialised seller with whom the purchaser may speak, with the result that the aural similarity of the signs would gain in importance. This being so, the Board was wrong to find that there was a likelihood of confusion between the signs at issue in relation to ‘whips, harness, and saddlery’.

This Kat puts his money on an appeal by both parties, not because the General Court's decision is necessarily wrong (though he personally would have regarded the horse-and-rider combination and the words 'POLO CLUB' as having near-zero distinctiveness for anything relating to polo in the absence of persuasive evidence to the contrary), but rather because the potential value of the marks in commercial terms is great and the market for whips and harnesses may well have received a boost in light of the recent launch of Fifty Shades of Grey, with its helpful hints for keeping fit and achieving inner contentment.

How to pronounce Berkshire here
Rules of polo here and water polo here; rules for litigating Community trade marks here and here

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