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20 June 2018Trademarks

Ralph Lauren’s ‘Polo’ mark has enhanced distinctiveness, says EU court

The EU General Court today confirmed that Ralph Lauren’s ‘Polo’ trademark has enhanced distinctive character, in a win for the fashion brand.

In 2014, Gidon Anabi Blanga, an individual residing in Mexico, filed an application to register the word mark ‘Hpc Polo’ with the European Union Intellectual Property Office (EUIPO).

Blanga sought to register the mark in classes 18 and 25 for goods including leather products and clothing.

The Polo/Lauren Company, a subsidiary of Ralph Lauren, filed a notice of opposition in 2015. Ralph Lauren owns the EU word mark ‘Polo’, registered in 2010 (trademark number 4,049,334), for leather goods, accessories, and general items of clothing in classes 18 and 25.

Polo Ralph Lauren is one of the company’s main brands.

In 2016, the EUIPO’s Opposition Division upheld Ralph Lauren’s opposition, and the First Board of Appeal affirmed the decision in 2017.

The board noted that the goods covered by the earlier registered mark and the applied-for mark are identical, adding that the marks share the common element ‘Polo’.

Ralph Lauren’s mark has a distinctive character due to public recognition and reputation, so there is a likelihood of confusion between ‘Hpc Polo’ and ‘Polo’, the board concluded.

In his appeal, Blanga criticised the board for making errors when comparing the marks. He accused the board of failing to assess them in their entirety as well as not taking account of the weak distinctive character of the word ‘Polo’, which led the board to wrongly conclude that there is a likelihood of confusion.

The court affirmed the board’s reasoning that the ‘Hpc’ element of the applied-for mark is “not sufficient to introduce differences neutralising that common element” of ‘Polo’. Contrary to Blanga’s argument, “it is clear” that the board considered the marks in their entirety, the court said.

As decided by the board, ‘Polo’ and ‘Hpc Polo’ are visually, phonetically, and conceptually similar to an average degree, even taking into account the ‘Hpc’ element, the court confirmed.

The court noted that, at the EUIPO, Ralph Lauren demonstrated “intensive use” of the earlier mark for clothing including in advertising and promotional material, and that it had been selected as the official outfitter of events including the Wimbledon tennis tournament.

The court agreed with Ralph Lauren and the EUIPO that the ‘Polo’ mark has an enhanced distinctive character due to the public’s familiarity with it and said that Blanga’s argument to the contrary was “ineffective”.

“The more distinctive the earlier mark, the greater will be the risk of confusion,” the court said.

As the goods covered by the marks are identical, the marks themselves are similar to an average degree and the earlier mark enjoys a high level of distinctiveness, a likelihood of confusion arises, the court concluded.

The court dismissed Blanga’s appeal and ordered him to pay the costs.

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