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Herdade de S. Tiago II – Sociedade Agricola, S.A v OHIM / The Polo/Lauren Company, LP.

A recent case involving the Polo/Lauren Company considered the dominant and distinctive elements of figurative trade marks, the distinctiveness of single letter trade marks and the effect of peaceful co-existence in a part of the European Union on likelihood of confusion.

The background

Herdade de S. Tiago II filed a trade mark application for the letter V overlaid with a polo player atop his horse, swinging a polo mallet as shown below:

Roman numeral V overlaid with polo player

The application covered classes 3, 18, 25, 28, 41 and 43.

The Polo/Lauren Company opposed it on the basis of three earlier figurative trade marks comprised of a polo player atop his horse, swinging a polo mallet as shown below:

3 polo players

The earlier rights were registered in Benelux, the United Kingdom and the European Union and covered, between them, classes 9, 18, 20, 21, 24, 25 and 28.At first instance, OHIM held that the marks were confusingly similar and refused the application for the vast majority of the goods applied for deciding:

  1.  the marks were conceptually identical (each of the marks referring to the concept of polo) and visually similar to a medium degree (an aural comparison was not possible in this case as although the application contained the letter “V” and could therefore be pronounced by the relevant public, the earlier marks had no elements which could be pronounced);
  2. the earlier marks, were not particularly inherently distinctive for certain goods (whips and saddlery, clothing footwear and headgear and gymnastic and sporting articles) because they could be used for playing the sport of polo:
  3. the Opponent could successfully claim “enhanced distinctiveness” through the use made of the marks for clothing and this increased the likelihood of confusion between the signs in question for those goods;
  4. the goods and services covered by the application were found to be identical and/or similar to those for which the earlier mark was protected.

OHIM held that there was a likelihood that the relevant public would see some kind of economic link between the marks for all the goods and services except those for which the mark was found to be not inherently distinctive and for which no enhanced distinctiveness could be claimed, those which were dissimilar to the goods covered by the earlier marks and for which the public would not make an economic link.

  1. This decision was appealed by Herdade de S. Tiago II who asked the Board of Appeal to grant registration of the mark. The main points of its appeal were as follows:
    The signs at issue had been peacefully coexisting on the Portuguese marked since at least 2007, not only in terms of registration, but also in terms of use – this assertion was supported by evidence of use of the “V” mark in Portugal;
  2. OHIM’s assessment of the similarity of the marks was incorrect.

The Board of Appeal upheld OHIM’s decision saying that the letter “V” in the application held only “a rather weak distinctive character” and although the size of the letter V was not subordinate to the device element, the letter was placed in the background and is partially covered by the image of the hose and rider. Thus, the figurative element had at least an independent distinctive role in the composite sign as the Applicant had filed a community trade mark, the fact that it had successfully registered, and had been using, a trade mark in Portugal without confusion arising (i.e. the marks had coexisted peacefully in Portugal) was not relevant to the proceedings. The had filed an application for a community trade mark and the unitary character of the community trade mark system means that a community trade mark has to be refused even if the ground for refusal exists in only part of the European Union. Thus an application for registration must also be refused if a ground for acceptance exists only in a part of the European Union.

Herdade de S. Tiago II then further appealed to the General Court who upheld the reasoning of OHIM and the Board of Appeal and dismissed the appeal.

Philippa Olden, Trade Mark Attorney in the Intellectual Property Group said: “This case serves as a good reminder that brands should consider filing community trade marks as opposed to purely national trade marks in the European Union. The unitary character of a community trade mark means that even if an earlier right which can prevent the registration of a community trade mark only exists in one of the other member states of the European Union, the application must still be refused. Filing a community trade mark will prevent third parties from acquiring rights in other member states and which would prevent a businesses from trading in those countries at a later date.”