Polo player marks held to be confusingly similar

In Herdade de S Tiago II - Sociedade Agrícola SA v Office for Harmonisation in the Internal Market (OHIM) (Case T-90/13, September 18 2014), the General Court has rendered its decision in the proceedings between Herdade de S Tiago II - Sociedade Agricola SA (as applicant), OHIM (as defendant) and The Polo/Lauren Company LP (as intervener).

The decision reiterates that the assessment of the similarity between two signs means more than taking just one component of a composite trademark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trademark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, so that all the other components are negligible in the overall impression created by that mark.

According to settled case-law, the “likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered”, and the (average) public is deemed to be reasonably well-informed, observant and circumspect.

The dispute in question arose when, on March 28 2007, Herdade de S Tiago II applied for the registration of the following figurative sign on the basis of the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009):

The application covered Classes 3, 18, 25, 41 and 43 of the Nice Classification.

On January 7 2008 The Polo/Lauren Company filed a notice of opposition pursuant to Article 41 of the regulation based on the following prior signs:

• the Community figurative mark No 4049201, filed on September 29 2004 and registered on November 3 2005, covering Classes 9, 18, 20, 21, 24 and 25:

• the UK national figurative mark No 1164945, filed on November 18 1981 and registered on July 14 1989, designating goods in Class 25:

• the Benelux figurative mark No 520117, filed on July 7 1992 and registered on April 1 1993, covering Class 28:

The opposition was based on Article 8(1)(b) (likelihood of confusion) and Article 8(5) (the mark applied for would be detrimental to the reputation of the earlier mark) of the regulation.

The Opposition Division rejected, on the basis of Article 8(1)(b), the application in respect of “games and plaything” in Class 28 and all the goods in Classes 18 and 25, with the exception of “whips, harness and saddlery” in Class 18. With regard to Article 8(5), the application was rejected in respect of “soaps, perfumery, essential oils, cosmetics and hair lotions” in Class 3, “gymnastic and sporting articles not included in other classes” in Class 28 and “sporting activities, organisation of exhibitions for sporting purposes; sporting activities, including organisation of sports competitions” in Class 41. The application was accepted in respect of the other goods and services.

On October 28 2011 the applicant filed an appeal with OHIM under Articles 58 to 64 of the regulation.

The Second Board of Appeal of OHIM dismissed the appeal with regard to Article 8(1)(b) (in light of the identity of the goods concerned and the similarities between the signs at issue, as well as the enhanced distinctive character acquired through use of the earlier marks) and Article 8(5) (the use of the mark applied for would be detrimental to the repute of the earlier mark).

The applicant appealed to the General Court, alleging:

1. infringement of Article 8(1)(b) (according to the applicant, the Board of Appeal had erred in finding a likelihood of confusion between the signs);
2. infringement of Article 8(5) (the applicant claimed that the Board of Appeal had erred in finding that the earlier marks have a reputation within the meaning of Article 8(5)).

The court dismissed the first plea based on the following reasoning:

• The target public consisted of average, reasonably well-informed and observant consumers of the goods covered by the trademarks.
• The goods included in Classes 18 and 25 covered by the parties' marks were identical.
• The figurative element of the polo player was the only element of the earlier mark, and had an independent distinctive role in the mark applied for. It was obvious from the position and the size of the figurative element at issue that the polo player could not be considered as negligible in the overall impression given by that trademark.
• The letter 'V' in the mark applied for did not have any distinctive character.
• At the visual level, the parties' trademarks represented a polo player holding a mallet, with a horse on the move. Even if there were some differences between the marks, it was not possible to assert that there was no similarity between them. The average consumer would certainly identify and remember a polo player (the letter V was not the dominant element of the mark applied for).
• At the conceptual level, the presence of the figurative element of a polo player in the trademarks referred to the sport of polo. The letter 'V' in the mark applied for did not have any conceptual meaning for the relevant public.
• The Board of Appeal was thus right in finding the marks to be visually similar to a medium degree and conceptually identical.
• No similarity was found at the phonetic level.

With regard to the second plea, the applicant argued that the earlier marks did not have a reputation within the meaning of Article 8(5). The applicant relied on the fact that The Polo/Lauren Company had produced evidence with regard to a period considerably earlier than the filing day of the trademark applied for.

In order to benefit from the protection afforded under Article 8(5), the following cumulative conditions must be satisfied:

1. the trademark that is claimed to have a reputation must be registered;
2. the earlier mark and the mark applied for must be identical or similar;
3. the earlier mark must have a reputation in the relevant territory;
4. the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trademark (it is sufficient that the relevant public establish a link between the trademarks; confusion is not necessary).

The second plea was rejected, since:

1. The Polo/Lauren Company had proved that the earlier marks were registered;
2. there was a certain degree of similarity between the goods and services covered by the trademarks;
3. The Polo/Lauren Company had proved that the earlier marks had a reputation in the relevant territories; and
4. the relevant public was able to establish a link between the earlier marks and the mark applied for.

Margherita Barié and Pietro Pouché, Carnelutti Studio Legale Associato, Milan