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Polo on horses and polo on bicycles – similar or dissimilar?

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09/10/2014

In Polo/Lauren Company v OHIM [1] the intervener applied for registration as a Community trade mark of a figurative sign depicting a bicycle polo player in respect of Class 18 (travel bags and umbrellas), Class 25 (clothing, footwear and headgear) and Class 28 (gymnastic and sporting articles not included in other classes).

The opponent, Polo/Lauren, opposed the application on the basis of two earlier trade mark registrations; a Community trademark depicting a polo player and a national trade mark, registered in Austria, also depicting a polo player. Polo/Lauren’s appeal from the Opposition Division was dismissed by OHIM’s Board of Appeal on the basis that the signs in issue were dissimilar overall and there was no likelihood of confusion.

Article 8(1)(b) of the Community Trade Mark Regulation [2] provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if – because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks – there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. In the opinion of OHIM’s Board of Appeal, because the marks were dissimilar, the threshold for successful opposition set out in Article 8(1)(b) was not reached.

The General Court disagreed, reaching the opposite conclusion on similarity. Having regard to the visual and conceptual similarities between the signs in issue, the General Court considered that the signs had a degree of similarity, and found that the Board’s finding of the bicycle depiction being the dominant element was inaccurate, as this did not consider the mark as a whole. Subsequently, the Board’s finding that there was no likelihood of confusion was premised on the erroneous conclusion that the signs in issue were dissimilar.

The lesson from this case is how difficult it is to second-guess what a hearing officer, OHIM or court will determine as regards similarity between competing signs. Whilst decision-makers will do their best to apply objective criteria, there is inherently a degree of subjective analysis and what looks similar to one person might well look dissimilar to another.

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[1] T-265/13
[2] Regulation (EC) No 207/2009