Lady golfers win second round in LPGA logo dispute

European Union

In Professional Golfers' Association Limited v Ladies Professional Golf Association, the Office for Harmonization in the Internal Market (OHIM) Second Board of Appeal has rejected an opposition to the mark LPGA.

In August 2005 the Ladies Professional Golf Association (Ladies Professional) applied to register the LPGA logo as a Community trademark to cover goods and services in Classes 25, 28 and 41 of the Nice Classification. The Professional Golfers' Association (Professional Golfers) opposed the application based on, among other things, Community trademark registrations for PGA for goods and services in Classes 16, 25, 28, 37, 41 and 42. The OHIM Opposition Division dismissed the opposition, holding that:

"since the consumer perceives the signs in their entirety, the differences in the present case are sufficient to render the signs in question dissimilar to each other overall."

Professional Golfers filed an appeal to the Second Board of Appeal, arguing that its PGA mark was distinctive of its goods and services, and that there was a likelihood of confusion with the LPGA logo due to the similarity of the marks and identity and/or similarity of the goods and services. Professional Golfers also argued that the Opposition Division decision was in conflict with prior decisions of the Opposition Division involving Professional Golfers and a third party.

In response, Ladies Professional argued that PGA was non-distinctive and referred to the prior decisions cited by Professional Golfers which stated that "the letters PGA … lack inherent distinctiveness", as well as Ladies Professional's earlier evidence. Ladies Professional contended that, because PGA was non-distinctive, there were sufficient differences between the marks to render them dissimilar. It also referred to its earlier submissions that the LPGA logo was well known in Europe.

Citing Ladies Professional's evidence and submissions, the board concluded that "the term 'PGA' has, at most, a very low degree of distinctiveness with regard to golf-related goods and services". The board found that, because the only common elements between the marks in question were the letters 'PGA', which have a very low degree of distinctiveness, the differences between the marks were sufficient to render them dissimilar, even for identical goods and services.

Accordingly, Professional Golfers' appeal was rejected.

Professional Golfers has filed a Notice of Appeal to the European Court of First Instance.

For background discussion of this case, see Lady golfers secure win in LPGA logo mark play off.

Allan S Pilson, Ladas & Parry LLP, New York

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