Beverly Hills Polo Club loses ‘handbag’ dispute

EUIPO appeal over logo ends in win for rival | The lifestyle brand licences its polo player logo to Ralph Lauren | Board clarifies whether a handbag constitutes ‘luggage’.

Lifestyle Equities, the owner of the luxury  Beverly Hills Polo Club (BHCP) brand, has lost its bid to revoke a rival mark after the court held that its logo covered luggage only, and not handbags.

Several leading fashion brands including  Ralph Lauren licence the BHCP logo at the heart of the case.

The court handed down the decision today, March 1, rejecting a bid by Lifestyle Equities to annul an earlier decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO).

Polo clubs’ 20-year trademark battle

The origins of the dispute date back more than two decades.

In October 2002, Greenwich Polo Club filed an application for registration of an EU trademark with EUIPO, covering luggage and clothing items in classes 16, 18 and 25.

Greenwich Polo Club is a well-known polo club based in Greenwich, Connecticut in the US. The club owns and licenses a number of registered trade marks for logos consisting of a polo pony or ponies and rider(s) with mallet(s) and the text 'Greenwich Polo Club'.

In June 2018, Lifestyle Equities filed an application for a declaration of invalidity of this mark in respect of all the goods covered by that mark based on its own earlier EU figurative mark, ‘Beverly Hills Polo Club’.

Fast forward to 2019, and the EUIPO revoked Greenwich’s mark in respect of all the goods, including luggage in a parallel proceeding, with the exception of the goods in Class 25, covering ‘men’s, women’s and children’s clothing’.

In April 2021, the cancellation division rejected the application to invalidate the mark in its entirety, prompting Lifestyle to file a notice of appeal with the EUIPO against the decision.

This was dismissed by the Board of Appeal in February 2022, which found that “there was no competition or aesthetic complementarity between the goods at issue”.

Board: A handbag is not ‘luggage’

This case honed in on the definition of ‘luggage’ and the board’s contention that this definition does not include ‘handbags’.

Lifestyle argued that Greenwich’s mark should be revoked as it infringed its branded handbags.

According to the Board of Appeal, ‘luggage’ has an essentially utilitarian function, namely that of containing items for the specific purpose of travelling, which included suitcases, travel bags and trunks.

It took the view that that term included neither ‘handbags’, which, according to that dictionary, are small bags used to carry things such as money and keys when going out, nor ‘purses’ or ‘wallets’, for the same reason.

Lifestyle countered that the definition of ‘luggage’ includes handbags, as a form of hand luggage, whether or not they are used for travelling.

According to the applicant, the Board of Appeal used too limited a definition, which wrongly led it to conclude that the goods at issue were dissimilar.

But the court noted how every applicant for an EU trademark must provide, for each of those goods and services, a description meeting the requirements of precision and clarity to enable the authorities to determine, on that basis alone, the extent of the protection sought.

Consequently, it found that EUIPO is not under any obligation to make an assessment of each subcategory coming within a broader category of goods or services covered by that mark, but must direct its examination to the category in question.

The court found that since Lifestyle has not specified the subcategories of bags or luggage to which it intended to refer by reference to the general category of ‘luggage’ covered by the earlier mark, that category must therefore be understood in accordance with the inherent meaning of the term ‘luggage’, since that term is already sufficiently clear and precise.

It added that the board correctly took account of the definition of the term ‘luggage’ as it appears in the Collins Dictionary, and which states that this relates to ‘the suitcases and bags you take with you when [travelling]’.

The court concluded that the earlier mark is registered only for ‘luggage’ in Class 18, whereas the contested mark was registered only for ‘men’s, women’s and children’s clothing’ in Class 25, and not for both types of goods.

The court also held that the existence of aesthetic complementarity between the goods is not, by itself, sufficient to conclude that there is a similarity between them.

Furthermore, the court held that new evidence, which included screenshots and links to websites of marks, in particular luxury marks, selling both ‘clothing’ and ‘luggage’, ‘suitcases’ and ‘travel bags’, was inadmissible.

In its conclusion, the court said that Lifestyle failed to establish that the Board of Appeal made an error of assessment in finding that, even if it could not be ruled out that some consumers choose ‘luggage’ on the basis of their taste in clothing.

Accordingly, the action was dismissed in its entirety.

This isn’t the first time the two luxury companies have been embroiled in an infringement dispute.

In May 2021,  Lifestyle Equities lost a trademark case after the High Court of England and Wales found that  Greenwich Polo Club and its licensing agency were not liable for infringement.