BEVERLY HILLS POLO CLUB is not confusingly similar to POLO

In two decisions, the Intellectual Property and International Trade (IP&IT) Court has overturned a ruling of the Board of Trademarks in which the latter had refused to register the trademark BEVERLY HILLS POLO CLUB (April 30 2008 and July 7 2008).

 

Young Sangyo Co Ltd filed an application for the registration of the trademark BEVERLY HILLS POLO CLUB (and polo player design) with the Department of Intellectual Property of Thailand for goods in Classes 18 and 25 of the Nice Classification, among others. The registrar of trademarks ordered that Young Sangyo provide a notice of disclaimer for the words 'Beverly Hills' and 'club', which Young Sangyo did. The registrar nevertheless rejected the application on the grounds that the trademark applied for was similar to earlier registered marks, including The Polo/Lauren Company's trademark POLO (and polo player design).  

 

Young Sangyo appealed to the Board of Trademarks. Among other evidence, Young Sangyo presented an agreement between the previous owner of the mark BEVERLY HILLS POLO CLUB and the owner of the POLO mark in order to demonstrate the honest concurrent use of the two marks. However, the board affirmed the registrar’s decision, holding that since Young Sangyo had disclaimed the words 'Beverly Hills' and 'club', these words were not an essential part of the trademark. Therefore, the dominant element of the mark was the word 'polo', which is similar to the registered mark POLO. Based on this finding alone, the board held that the trademark BEVERLY HILLS POLO CLUB was similar to the earlier registered trademark POLO and would thus cause confusion among consumers as to the origin of the goods.  

 

Young Sangyo appealed to the IP&IT Court, which overturned the board’s decision in two judgments (the first judgment with respect to Class 18 goods was rendered on April 30 2008, while the second judgment with respect to Class 25 goods was issued on July 7 2008). In both cases, the court held that although Young Sangyo had disclaimed the words 'Beverly Hills' and 'club', such disclaimer did not imply that Young Sangyo was prevented from using these words as part of its trademark, but signified only that other parties could use them in their trademarks.  

 

Therefore, the court held that the board had failed to comply with established principles of trademark comparison in holding that the remaining word 'polo' was the dominant element of BEVERLY HILLS POLO CLUB and that this part of the mark was confusingly similar to a registered trademark. In assessing the likelihood of confusion, the board should have assessed the overall impression of the mark, and not just a particular element. Consequently, the decision of the board was unlawful.

 

Having compared Young Sangyo's trademark and the earlier registered trademarks, the court concluded that the trademarks were dissimilar and that the registration of BEVERLY HILLS POLO CLUB was unlikely to cause confusion among the relevant public.