Non-English-speaking consumers will not perceive meaning of 'ASSN.' abbreviation

On September 6 2012 the Court of Justice of the European Union (ECJ) gave its decision in United States Polo Association v Office for Harmonisation in the Internal Market (OHIM) (Case C-327/11), looking at questions on the application of the Medion case and the comparison of elements in composite marks when making an overall comparison in order to assess the likelihood of confusion between marks.

United States Polo Association applied for registration of a Community trademark for the word sign U.S. POLO ASSN. covering various goods, including a number of textile goods in Class 24 of the Nice Classification. Textiles CMG filed a notice of opposition against all the goods applied for in Class 24 based on a likelihood of confusion with its earlier Spanish and Community trademark registrations for POLO-POLO in Class 24.

OHIM upheld the opposition and United States Polo appealed. Both the Board of Appeal and then the General Court dismissed the appeal, agreeing with OHIM's decision that the marks at issue were visually, phonetically and conceptually similar so that there did exist a likelihood of confusion. 

United States Polo appealed to the ECJ, presenting four grounds of appeal, based on an alleged infringement of Article 8(1)(b) of the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009). All grounds were dismissed by the ECJ as either unfounded or inadmissible.

Under the first ground of appeal, United States Polo claimed that the General Court had:

• erred in law by considering that the element 'POLO' has an independent distinctive character in the mark applied for; and
• disregarded the principles laid down by the ECJ in the Medion case. 

Dismissing this ground as unfounded, the ECJ found that:

• the General Court had not explicitly referred to the judgment in the Medion case; and
• its finding that the word 'Polo' has an independent distinctive role in the mark applied for when considered overall, putting the relevant public in a position to recognise it by the element that it has in common with the earlier mark, did not show that it disregarded the principles laid down in Medion.

The ECJ went on to say that, in fact, the General Court had not found that the circumstances of this case were of the type referred to in Medion; the court had properly made an overall assessment of the marks at issue, taking into account all relevant factors. 

Secondly, United States Polo claimed that:

• the General Court had attributed exclusive and excessive importance to the common element 'POLO'; and
• by failing to properly consider the other elements 'U.S.' and 'ASSN.', the court had failed to compare the marks at issue as a whole.

The ECJ disagreed, finding that, even though the General Court had found that the elements 'U.S.' and 'ASSN.' were of weak distinctive character, it had properly considered their relative importance for the overall impression of the signs at issue, thus making this ground of appeal unfounded. Furthermore, since this ground of appeal called into question the factual assessment made by the General Court, it was held to be inadmissible: absent an allegation that the facts and evidence have been distorted, an appeal to the ECJ lies only on points of law.

In its third and fourth grounds, United States Polo claimed that:

• the General Court had failed to fully take into account all circumstances of the case and, in particular, the repetition of the element 'POLO' in the earlier mark; and
• the court's reasoning in assessing the elements 'U.S.' and 'ASSN.' was inconsistent and contradictory, leading to an incorrect assessment of the likelihood of confusion. 

Again these grounds were dismissed as inadmissible, since they concerned the factual assessment made by the General Court.

Although the judgment does not bring any significant changes, it serves as a reminder that, since the ECJ will consider only questions of law and not matters of fact, it is important to present all evidence and submissions as to the factual circumstance of the case early in the process. The fact that the General Court found that United States Polo had not shown that the meaning of the abbreviation 'ASSN.' would be perceived by the non-English speaking section of the relevant public also highlights that owners of trademarks containing abbreviations of English words should not assume EU-wide recognition of such abbreviations, even where they would be easily recognisable by the English-speaking public. If the abbreviation 'ASSN.' had been shown to be universally recognised, then this may have impacted on whether or not there was found to be a likelihood of confusion.

Claire Keepax, Field Fisher Waterhouse, London