11 May 2021TrademarksMuireann Bolger

Greenwich beats Beverly Hills in polo brand showdown

Lifestyle Equities, the owner of the Beverly Hills Polo Club (BHCP) brand, has lost a trademark case, after the English High Court found that Greenwich Polo Club and its licensing agency were not liable for infringement.

The decision was handed down by Justice Marcus Smith yesterday, May 10.

The dispute arose when Netherlands-based Lifestyle Equities sued its US competitor Greenwich Polo Club and licensing agency, the Copyrights Group, for infringing its trademarks.

Last year, Lifestyle Equities had secured a win against Santa Monica Polo Club in a similar trademark dispute at the High Court

Lifestyle Equities had argued that Greenwich Polo Club’s marks had created a risk of consumer confusion.

The court heard how according to Lifestyle Equities, its brand captures the excitement of the sport “polo”, along with the exclusivity and camaraderie of membership of a private club. Several leading fashion brands including Ralph Lauren licence the logo for clothing, footwear, textiles, bedding and perfume.

Wide ‘web of liability’

Justice Smith, however, found against Lifestyle Equities' contention that its rival had infringed its trademarks, stating that it is “quite clear that this pleading seeks to spread the web of liability extremely wide”.

Notably, he found against Lifestyle Equities’ position “that any branding with a polo player on a horse infringes, however many horses and whichever way they are facing”, holding that the company had erred in considering that its exclusive monopoly extended to parties who “imitate the appearance, the spirit and the style of the brand”.

Justice Smith found that all of the marks at issue comprised two distinct components: a figurative element comprising one or two polo ponies, with rider(s) and polo mallet(s); and word elements namely “Beverly Hills Polo Club” or “Greenwich Polo Club”.

The judge held that the image of a single polo horse, with a rider and mallet, is not a mark at all, but purely a decorative image that no one could sensibly regard as a badge of origin or reputation. He also held that another disputed logo is even more "arty" and decorative, being a single colour melange of two polo ponies and rider.

“These images are not trademarks at all,” contended Justice Smith.

Evoking the spirit of polo

He added that these images do not do anything more than evoke the sport of polo and is not the same as the case of a Nike "swoosh" or some other purely figurative sign that links to or evokes a particular brand or producer.

Greenwich held that the respective marks are not similar enough and that there was also no likelihood of confusion because there is a crowded and well-developed market for consumer items, in particular clothing, using logos of polo players on horses.

The judge found that in Greenwich Polo Club’s case, “it is a polo club and making a connection with that polo club in its branding does not deceive or confuse the public. It is not as though Greenwich Polo Club is trying to copy Beverly Hills. That would be absurd…

Following an analysis of the evidence, he held that the Greenwich signs are not similar to the BHPC Logo, and he found that the reasonably well informed and reasonably circumspect consumer could not be confused by the marks.

He went on to find that there is no infringement under Article 9(2)(b) and Article 9(2) (c) of the EU Trademark Regulation / section 10(2) and 10(3) of the Trade Marks Act 1994.

Consequently, the judge also found that the other defendants in the case, including an individual director of the Copyrights Group, were not liable for infringement,

“The judge backed up our view that the critical distinction is that the words “Beverly Hills” in one case, and “Greenwich” in the other actively seek to differentiate between different originators, ” said Simon Miles, head of IP at Edwin Coe, who represented Greenwich Polo Club.

“In the case of the defendants, what is indicated is the actual club...the Greenwich Polo Club. In the case of the claimants, it is the “authentic” lifestyle brand represented by the products sold under the brand, detached from any real polo club.”

Word elements ‘crucial’

He added that crucially, the judge held that it is the word element that is the critical part of both the BHPC Logo and the Greenwich sign and this element is not similar but orally, visually and conceptually very different.

According to Miles, this position reflected Lifestyle Equities’ successful action in a case involving Santa Monica Polo Club where a “surprisingly broad range” of trademarks used by Santa Monica were found to be infringing.

“We thought that the judge in the Santa Monica case perhaps did not have recourse to evidence which we felt showed that there had historically been a lot of third party ‘polo club’ trademarks in use in the course of trade in the EU, and that as such the polo horse and rider motif really served, in this instance, to make a non-distinctive link to the sport of polo,” concluded Miles.

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