'Polo' mark accepted for registration as variant of prior marks

The Greek Supreme Court has annulled a decision of the Court of Appeal, finding that a variant of prior trademarks could overcome an opposition based on third-party trademarks (Decision 577/2011).
The applicant, a US company engaged in the sports clothing industry, applied in 1998 for the registration of the trademark RLX POLO SPORT for, among other things, goods in Classes 18, 20, 25 and 28 of the Nice Classification. The applicant already owned 13 Greek trademarks, consisting of or incorporating the word 'polo', the first of them having been filed in 1971. The opponent, a Greek sports articles company, opposed the registration of the mark, claiming that it was confusingly similar to its prior trademarks POLO (and climber device) and POLO (in stylised letters in a rectangular frame), filed in 1976 and 1983, respectively.
The Trademark Administrative Committee allowed the registration of RLX POLO SPORT on the grounds that it was a ‘continuation’ of the applicant’s series of POLO marks, which are well known in the Greek market.
The First Instance Court affirmed, ruling that:
  • the applicant is the owner of a series of trademarks (worldwide and in Greece) incorporating the word 'polo' as their dominant and distinctive element;
  • the applicant and its trademarks have been well known in Greece since 1971; and
  • the contested trademark should be treated as a ‘continuation’ of the applicant’s series of POLO marks.
The opponent appealed. The Court of Appeal upheld the appeal, finding that the contested trademark was similar to the opponent’s prior trademarks. In particular, the court took into account the fact that the word 'sport' is descriptive in association with sports articles and clothing, and that the term 'RLX' has no meaning for the Greek consumers. It reached the conclusion that the addition of 'sport' and 'RLX' in the contested trademark was insufficient to differentiate it from the opponent’s trademarks.
On final appeal, the Supreme Court annulled the decision of the Court of Appeal and the case was referred back to the lower court for reconsideration. The Supreme Court found that the Court of Appeal had erred in deciding the case without taking into consideration the applicant’s allegation regarding its prior rights in POLO, which dated back to 1971.
In particular, the Supreme Court held as follows:
  • The provisions of Article 4 of the Greek Trademarks Act (2239/1994) reflect the fundamental principle of prior in tempore potior in jure ('He who is prior in time is stronger in right'). Reference was made to the decision of the Court of Justice of the European Union in Anheuser-Busch Inc v Budejovický Budvar, národní podnik (Case C-245/2002, Paragraph 98).
  • Since the applicant's rights in POLO predated the opponent’s trademarks, it was entitled to apply for variants of this sign and the contested trademark should be treated as a ‘continuation’ of the applicant’s series of POLO marks.
  • The opponent could object to the registration of these variants only if it could demonstrate a ‘characteristic’ similarity with its trademarks.
  • The Court of Appeal had erred in limiting its examination to the issue of the similarity between the trademarks at issue.
The Supreme Court's decision seems to create a new category of trademarks consisting of variants of prior trademarks, which can be successfully opposed only if they are ‘characteristically’ similar to third-party trademarks. However, this newly introduced concept of ‘characteristic’ similarity does not seem to have a legal foundation in the Trademarks Act or the EU Trademarks Directive (2008/95/EC).
Penny Chr Nakou, Dontas Law Offices, Athens

Get unlimited access to all WTR content