RALPH LAUREN’S ‚POLO‘ TRADEMARK DESERVES ENHANCED LEGAL PROTECTION, GENERAL COURT SAYS

On 20 June 2018, the General Court of the European Union (GC) ruled that the distinctiveness of the trade mark ‚POLO’ by Ralph Lauren’s eponymous fashion brand is indeed so famous that it requires broader legal protection against similar trademarks. What is significant in this decision is the fact that, even though a mark may not be exceptionally distinctive, its recognition by the public combined with its acquired reputation and its influence on the market is enough to grant ‘POLO’ enhanced protection against the registration of similar marks.

                                        POLO                                               vs.                                                      HPC POLO

                        (EU Trademark No. 4049334)                                                                  (EU Trademark No.  013531462)

                                  (Word mark)                                                                                                  (Word mark)

I. Background of the case

On 5 December 2014, the applicant Mr. Gidon Anabi Blanga,a resident of Mexico, filed an EU trademark with the European Union Intellectual Property Office (EUIPO). The mark the registration was requested for was the word sign HPC POLO (Trademark No. 013531462). The goods in respect of which registration was applied for belong to Classes 18 and 25 of the Nice Agreement. After the publication of the trademark application, the intervener, The Polo/ Lauren Company LP filed a notice of opposition with the EUIPO, citing the similarity between the trademarks and the goods and services covered (Article 8(1)(b) of the Community Trade Mark Regulation-from now on CTMR), as well as the reputation of the trademark ‘polo’(Trademark No. 4049334) within the Community (Article 8(5)  CTMR), as reasons for which the registration of the later mark should not be granted.

The EUIPO’s Opposition Division upheld the opposition, after which Mr. Blanga filed a notice of appeal, which in turn the First Board of Appeal of EUIPO dismissed in accordance to Articles 8(1)(b) and 8(5)  CTMR. According to the Board, the goods covered by the two marks were found to be identical and the signs in question similar to an average degree, on account of their common element ‘polo’. The average consumer in the European Union (EU), claimed the Board, could likely confuse the two marks, given the reputation the word mark ‘POLO’ has acquired and its immediate connection to a particular fashion house. Mr. Blanga then turned to the General Court of the European Union (GC), asking for the annulment of the contested decision to the part where the Board of Appeal upheld the merits of the opposition.

II. Decision of the GC (T-657/17) 

In its preliminary observations the GC confirms that a likelihood of confusion between the two marks exists, namely because the average consumer in the EU territory could quite possibly associate the HPC POLO word sign with that of the world-famous fashion brand. Moreover, the fact that the goods the signs represent, are identical and come from economically-linked undertakings (as they both have to do with leather goods and clothing) further adds to the confusion created on the market. The element ‘HPC’ of the mark Mr. Blanga applied for was deemed insufficient to differentiate the signs from each other, given that the perception of the mark from the consumer is based on its entirety and not on an analysis of its various details. By examining each mark as a whole, along with the element ‘HPC’, the GC upheld the Board of Appeal’s argument that they were visually, phonetically and conceptually similar and that the aforementioned element was included in its entirety within the mark applied for. This is further strengthened by the lack of a respective claim by Mr. Blanga, who failed to argue that the ‘HPC’ element gives the overall sign a completely different meaning from that of the trademark of the famous fashion brand. The Court specified that, even though the word ‘polo’ could immediately correspond to a certain type of clothing in the minds of consumers, it is still not generic enough and must be protected, since it is also one of the most influential trademarks internationally. On that note, the Court deduced that signs that are especially popular in the market should and must enjoy broader protection given the high risk of confusion with other similar marks and the similar goods and services they may offer.

It remains to be seen if Mr. Blanga appeals this decision and takes it to the last instance, the European Court of Justice (ECJ).