'Polo player' marks held to be confusingly similar
In The Royal County of Berkshire Polo Club Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-581/13, March 26 2015), the General Court has found that the mark ROYAL COUNTY OF BERKSHIRE POLO CLUB (and 'polo player' device) was confusingly similar to the earlier Community trademark (CTM) BEVERLY HILLS POLO CLUB (and 'polo player' device) for certain goods.
The Board of Appeal of OHIM had accepted the opposition to the registration of the mark ROYAL COUNTY OF BERKSHIRE POLO CLUB, filed by the owner of the earlier CTM BEVERLY HILLS POLO CLUB, on the ground that there was a likelihood of confusion as regards the goods covered by both marks in Classes 9, 14, 18 and 25 of the Nice Classification.
The similarity of the signs and the likelihood of confusion were the main issues brought before, and examined by, the General Court.
First, the applicant claimed that the statement of reasons in the decision of the Board of Appeal was inadequate, in violation of Article 75 of the Community Trademark Regulation (207/2009). In line with case law, the General Court ruled that Boards of Appeal are not obliged to take a view on every argument submitted to them by the parties and that it is sufficient if they set out the facts and legal considerations having decisive importance in the context of their decision. Making reference to the relevant paragraphs of the decision of the Board of Appeal, the General Court concluded that the findings of the board as to the likelihood of confusion were amply supported by its reasoning.
In its challenge to the Board of Appeal’s assessment on the similarity of signs, the applicant argued that the board had attributed an unjustified and excessive value to the image of the polo player in the marks at issue and had failed to consider each mark as a whole.
The General Court first assessed the distinctive character of the image of a polo player and of the words ‘polo club’. It held that the above elements have:
- weak distinctiveness in relation to goods closely connected to the playing of polo, namely, "whips, harness and saddlery" in Class 18;
- normal distinctiveness in relation to Class 25 goods; and
- inherent distinctiveness which is more enhanced in relation to goods that have no connection with the playing of polo.
Additionally, it stated that the image of the polo player occupies a central position and has a "central role" in both marks, as can be seen below:
Last but not least, the General Court found that there was a significant conceptual similarity between the signs under comparison, given that both of them brought polo playing to mind.
Based on the above, the General Court found that there was a likelihood of confusion as regards to all the goods in Classes 9, 14, 25 and some of the goods in Class 18 not directly linked to polo playing. In addition, the General Court held that there was no risk of confusion as regards "whips, harness and saddlery" in Class 18, since the similarity between the signs was reduced significantly by the fact that their common elements have low inherent distinctiveness in relation to those goods.
In response to the applicant’s argument regarding the impact of the aural differences on the risk of confusion, the General Court noted that any such dissimilarity was not sufficient to preclude a likelihood of confusion given that the visual aspect is more important than the aural aspect when, as in the present case, the goods are usually sold in self-service stores where consumers choose the goods themselves.
The above decision is based on factual conclusions which seem to be well supported by the relevant case law on the criteria that should be taken into account when assessing confusing similarity.
Nicolas K Dontas, Dontas Law, Luxembourg
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