With Contributions From Ramon Luque
The General Court (EU) recently delivered a judgment which could offer brand owners greater protection against adaptations and parodies of their brands. The case is The Polo/Lauren Company v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
In late 2009, FreshSide Ltd filed a Community trade mark (“CTM”) application at OHIM, the EU body responsible for CTM registrations. FreshSide, which operates under the trading name “Chunk” and has a dedicated bike polo apparel website, had applied for a sign consisting of a polo player riding a bicycle. Ralph Lauren duly filed an opposition based on two of its existing trademarks, both consisting of a polo player riding a horse. All three signs are pictured in the first paragraphs of the judgment. After exhausting the appeals process at OHIM, Ralph Lauren took OHIM to the General Court to have its decision annulled.
Ralph Lauren had based its arguments before OHIM on Article 8(1)(b) and 8(5) of the Community Trade Mark Regulation. Under Article 8(1)(b), Ralph Lauren had to prove the following cumulative conditions:
- Chunk’s potential trademark is identical or similar to Ralph Lauren’s existing marks;
- Chunk’s potential trademark and Ralph Lauren’s existing trademarks relate to similar or identical goods; and
- for that reason, there exists a likelihood of confusion on the part of the public in the territory in which Ralph Lauren’s trademarks are protected.
Ralph Lauren initially failed on the first condition, as OHIM’s Second Board of Appeal considered the signs dissimilar. Its reasoning was chiefly premised on the fact that Chunk’s sign pictured a polo player riding a bicycle, and Ralph Lauren’s a horse. OHIM also found the signs conceptually distinct. Chunk’s sign alluded to the “emergent urban sport” of bike polo “played on tennis courts or in school playgrounds”, Ralph Lauren’s to the traditional sport of polo (the sport’s origins reportedly date back to Ancient Persia, around the fifth century BC).
The General Court disagreed, however, providing some useful guidance. First, it affirmed that “two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects” Annco v OHIM. The Court also referred to OHIM v Shaker, stating that the reference point for perceiving a trademark is the average consumer, who “normally perceives a mark as a whole and does not engage in an analysis of its various details”.
Accordingly, the General Court was not particularly impressed with OHIM’s crude dissection of the signs into horses, bicycles and polo mallets. The General Court observed that having conducted such an analysis, OHIM should have at least compared the size of the bicycle and horse to the sign’s other aspects. This would have led OHIM to the conclusion that the horse and bicycle were no more prominent than the polo mallets and, indeed, the mallets were similar in both brands’ signs. The General Court also stressed that the signs taken as a whole shared various elements, such as in angle and proportions.
In addition, the General Court took issue with OHIM’s finding that the signs were conceptually distinct. It pointed out that the public would probably find the concepts of bike polo and traditional polo indiscernible (bike polo being a concept probably unknown to most of the public), simply cognizing a man playing polo.
The Court concluded that there was at least a low degree of similarity between the signs, which would be enough for Ralph Lauren to succeed in its action against OHIM.
In advocating a more nuanced and holistic comparison of two signs, the General Court’s decision suggests that even a significant modification to an existing trademark may not escape the reach of the law if it bears at least a low degree of similarity to an existing trademark. This ought to be reassuring to brand owners. CovBrands will be alert to future developments…