IS THE CFI JUST HORSING AROUND?

The IPKat brings (slightly delayed) news of a strange Court of First Instance decision.

The Royal Berkshire Polo Club applied to register a Community trade mark in the form of a word and device mark consisting of a picture of a polo player, mallet aloft, together with the words ROYAL COUNTY OF BERKSHIRE POLO CLUB for various goods, including cosmetic and products for cleaning the body in Class 3, as well as products used for domestic cleaning (e.g. bleach) in the same class. Polo/Ralph Lauren opposed the application, based on its national registrations of various word and device marks, including one containing a picture of a polo player, mallet aloft, and the words POLP RALPH LAUREN and the word mark POLO. The OHIM Opposition Division rejected PRL’s opposition, but the Board of Appeal overturned that decision, allowing the opposition on likelihood of confusion grounds for the cosmetics and products for cleaning the body, but not for the products for domestic cleaning. The club appealed, arguing inter alia that the Board had paid too little attention to the word element of its mark when comparing the marks, and that the Board’s decision granted PRL an unfair and unjustifiable monopoly over the figurative element of a polo-playing horseman.

The club’s appeal was unsuccessful, but the Board’s decision was partially annulled, allowing the opposition for the domestic cleaning products as well as for the cosmetics and body-cleaning products.

Arguments were raised and rejected concerning a failure of the Board to give sufficient reasons, but it’s the substantive trade mark law rulings that the IPKat finds hard to swallow. He draws his readers’ attention to 2 paragraphs in particular:

“Next, it must be recalled that a complex trade mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the complex mark unless that component forms the dominant element within the overall impression created by the complex mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it…” [para.38]

The IPKat says that this is reintroducing praegertheorie for word and device marks, which will only recognise composite marks as being similar where the shared element dominates the mark, even though the theory was rejected for composite marks in Medion.

“Thirdly, the Court considers that the argument that, were it not to be annulled, the Board of Appeal’s decision would have the effect of according the intervener an unfair and unjustifiable monopoly over the polo player device, and would enable it to prevent any later application containing a similar logo cannot be accepted. … in relation to those products [the Class 3 goods], the device of a polo player is an image with high imaginative content. Such a device must be regarded as arbitrary for the goods in question and deserves to be protected against subsequent applications depicting confusingly similar devices. Indeed, the advantage of the legal regime of the Community trade mark lies precisely in the fact that it enables holders of an earlier trade mark to oppose the registration of later marks which take unfair advantage of the distinctiveness or repute of the earlier trade mark. Hence, far from according an unfair and unjustifiable monopoly to the proprietors of an earlier mark, that regime enables those proprietors to protect and exploit the substantial investment made to promote their earlier mark.” [para.43]

As far as the IPKat was aware, the principle that drives European trade mark law is that what we’re trying to prevent is later use that harms the functions (particularly the essential function) of the earlier trade mark. Mark-owners who seek to enforce those rights outside of those limits are acting outside of their legitimate interests. (Granted, this theory doesn’t fit in easily with the Art.8(5) protection against unfair advantage, but this was an Art.8(1)(b) case). Here however, the emphasis has shifted. The CFI identify the interest protected by trade mark law not as the function served by the trade mark, but instead as the protection of the investment that the owner has made in promoting his mark. Moreover, the key protection offered to the mark seems, according to the CFI, to be protection against misappropriation of that investment, rather than against harm to the mark.

Incidentally, the Kat is interested to see the use of the term ‘arbitrary’ used to describe the relationship between the mark and the goods. This is a US term, used to describe real (i.e. non-made up) words which have no relationship with the goods in question and is the second-highest form of distinctiveness in the distinctiveness hierarchy (the first being coined terms).