Abbreviations held not to be sufficiently distinctive

European Union
In United States Polo Association v Office for Harmonisation in the Internal Market (OHIM) (Case T-228/09, April 13 2011), the General Court has upheld the decision of the Board of Appeal of OHIM to allow an opposition against the registration of the word mark U.S. POLO ASSN. based on a likelihood of confusion with the earlier word mark POLO-POLO.

The applicant, United States Polo Association, argued that the Board of Appeal was wrong to find that the marks were sufficiently similar to cause a likelihood of confusion. The applicant claimed that the goods in question (textile goods) would be chosen by consumers on the basis of their appearance and suitability, among others, and would thus be closely inspected before purchase. The court, however, held that there was no evidence that the relevant public would demonstrate a more than average level of attention when purchasing the goods.

In addition, the applicant claimed that the Board of Appeal was wrong to find that there was a likelihood of confusion by comparing only one of the elements of the trademark applied for, namely the word ‘polo’. In contrast, the court found that the Board of Appeal had taken into consideration all the elements of the mark.

Regarding the visual similarity of the marks, the court stated that the acronym 'U.S.' would be perceived by the non-English-speaking section of the relevant public as relating to the geographical origin of the goods and, therefore, was not particularly distinctive. The abbreviation ‘ASSN.’ had no meaning as such, which meant that the word ‘polo’ would be the part of the mark by which it would be visually recognised. Moreover, according to the court, the marks were phonetically similar, since the abbreviations in the applicant’s mark would be pronounced letter by letter, or simply left unsaid.

The elements ‘U.S.’ and ‘ASSN.’ were not considered to be sufficiently distinctive to remove all conceptual similarity between the marks, which led to the conclusion that, overall, the marks were similar to a medium degree.

Finally, the applicant claimed that the fact that several of its earlier marks co-existed on the market with the earlier POLO-POLO mark indicated that there was no likelihood of confusion. In this regard, the court held that the applicant had produced insufficient evidence during the administrative proceedings to demonstrate that this reduced the likelihood of confusion. These earlier marks could, however, be taken into consideration if the applicant duly demonstrated that such co-existence was based on the absence of any likelihood of confusion, provided that these earlier marks were identical to the marks at issue.

Matti Nousiainen, Berggren Oy Ab, Helsinki

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