Polo Ralph Lauren Successfully Opposes Bicycle Polo Mark in EU General Court
By Marie-Andrée Weiss
The General Court of the European Union (the General Court) ruled in favor of U.S. company Polo Ralph Lauren which opposed the registration of a mark it found similar to its figurative mark representing a player on a horse holding a mallet. The case is The Polo/Lauren Company LP v. Office for Harmonisation in the Internal Market, T-265/13.
British company FreshSide Ltd., which operates under the name Chunk Clothing, sells clothes and accessories to bicycle polo aficionados. It filed an application for a Community figurative mark, representing a player on a bicycle holding a mallet, with the Office for Harmonisation in the Internal Market (OHIM), in class 18 for travel bags and umbrellas, class 25 for clothing, footwear and headgear, and class 28 for gymnastic and sporting articles. Chunk Clothing’s goods prominently carry this figurative mark, which was published on February 15, 2010.
Polo/Lauren (the Applicant) filed a notice of opposition on April 28, 2010, based on its two senior Community figurative marks representing a polo player on a horse holding a mallet, in classes 9, 18, 20, 21, 24 and 25. The Applicant’s marks are also affixed on apparel and accessories.
OHIM Opposition Division rejected the opposition in its entirety on October 28, 2011. The Applicant then filed a notice of appeal with OHIM which was dismissed on March 1, 2013. The Second Board of Appeal of OHIM found there could be no likelihood of confusion as the marks were dissimilar overall. The Applicant brought its claim to the General Court, claiming violation of Article 8(1)(b) and Article (8)(5) of the Community Trademark Regulation (CTR).
On September 18, 2014, the General Court ruled in favor of Applicant and annulled the decision of the Second Board of Appeal, finding the two marks to be similar.
No Likelihood of Confusion as the Marks are Visually Similar
Article 8(b) of the CTR gives the owner of a senior trademark the right to oppose a junior trademark if it is identical or similar to the senior trademark and there is thus a likelihood of confusion between the two marks. The Board of Appeal carried out a global assessment of the likelihood of confusion between the marks, focusing on the differences between the representation of the bicycle and of the horse. For the Board of Appeal, the fact that the player in the junior mark was riding a bicycle whereas the player in the senior mark was riding a horse was a difference “clearly and immediately noticeable” that would “remain in the relevant public’s memory” (paragraph 24). It found the two marks dissimilar overall.
The General Court noted that, for the Board of Appeal, “the graphic representation of a bicycle in a mark… constituted, at last, a dominant element of that mark. There is, however, nothing to support such a conclusion.“ The General Court explained that “the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details” (paragraph 22), and that, according to EU case law, “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” (paragraph 23).
The General Court then examined other elements of the marks. A mallet is raised by the rider in both the junior and the senior mark and is thus a “clearly visible,” not “negligible” element, even though the bicycle is “an appreciable difference.” The General Court also noted that both players were represented “at quite similar angles” (paragraph 25 and 26). For all these reasons, the marks were not visually dissimilar.
No Likelihood of Confusion as the Marks are Not Conceptually Different
As explained by the General Court, “conceptual differences may, to a large degree, counteract phonetic and visual similarities between the marks at issue, provided that at least one of those marks has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately” (paragraph 30). However, neither OHIM nor FreshSide Ltd, which intervened before the General Court, could convince the General Court that bicycle polo is a sport known by the public.
FreshSide argued that bicycle polo is “an emergent urban sport, which is played on tennis courts or in school playgrounds. That sport is therefore different visually and conceptually from the traditional sport of polo” (paragraph 18). But for the General Court, “no evidence has been put out… to suggest that bicycle polo is a sport of a game that is sufficiently known to the relevant public” (paragraph 30). As bicycle polo is not generally known, seeing a player with a mallet on a bicycle would not have the clear and specific meaning of “bicycle polo” for the relevant public. The marks were found to be not conceptually different by the General Court.
Is the Junior Mark a Parody?
Article 8(5) of the CTR provides a cause of action to the owner of the senior mark against a junior mark owner, if the registration of the junior mark “would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark.” For OHIM, if the marks are not similar under Article (1) (b), then there is no similarity under Article 8(5) either, a view shared by the intervener.
The applicant argued that the Board of Appeal should have found the marks to be similar and also argued that FreshSide’s mark was a parody. The intervener denied this. But the General Court was not convinced and it annulled the Board of Appeals’ decision which had rejected the Article 8(5)-based opposition solely because it found the two marks to be dissimilar. The General Court upheld Applicant’s arguments, including the parody claim.
This is an interesting case, because it is the Applicant which claimed the junior mark to be a parody as a defense. Conversely, the Intervener claimed its mark was a mark representing an average bicycle polo player. It provides on its website “The History of the Bicycle Polo” which explains that it was first conceived in 1891, that it is a “direct descendant “of the traditional polo game, and that is was presented in the 1908 Olympics games as an exhibition sport.
However, it is the similarity between the two marks which convinced the General Court, not the similarity between the two sports, but it is surprising that the General Court did not at least dismiss the parody argument. As such, it signals that it is not likely to entertain parody defenses in future trademark infringement and opposition cases.