Somewhat in the shadow of the decision August Storck KG v OHIM , which concerned chocolate mouse-shaped mark and received coverage in the specialized blogs (e.g. here, here, and here), another decision was also issued yesterday by the Court of Justice of the European Union (CJEU). The subject of contention in that case (United States Polo Association v. OHIM) was – word mark for textiles. The Court of Justice (Fifth Chamber) confirmed an earlier decision by the General Court (formerly the Court of First Instance) in the same case and reiterated its stance concerning likelihood of confusion when two marks are used for identical goods and have certain resemblance.
The appellant, Kentucky-based United States Polo Association, has been trying since August 2005 to have the word mark “U.S. Polo Assn.” registered as the Community mark in Class 24 for textiles, in particular bed sheets, pillowcases, beach towels, and ten other items. Standing in the way of the registration was the word mark “Polo-Polo”, registered by the Spanish company Textiles CMG, S.A. in Spain and applied-for at the Community level. In April 2008, the Opposition Division of the E.U. Office for Harmonization in the Internal Market (OHIM) upheld the opposition by Textiles CMG, S.A. for all contested goods in Class 24. United States Polo Association turned to OHIM’s Board of Appeal, but in March 2009 the Board dismissed the appeal. United States Polo Association then brought action against the decision of the Board of Appeal before the General Court, which dismissed the action on 13 April 2011. US Polo Association appealed that decision too – the summary of the appeal can be found here– but the Court of Justice dismissed the appeal yesterday.
Throughout the proceedings, both before OHIM and the CJEU, the principal issue was whether the average customer would experience the words “U.S.” and “Assn.” (in the mark “U.S. Polo Assn.”) as distinctive enough to offset the predominance of the remaining component of the contested mark – the word “Polo”. If not, the latter word, which also figures in the earlier mark “Polo-Polo”, would likely lead the customer to believe that the two marks come from the same or commercially related enterprises. Such belief is what constitutes the likelihood of confusion, and it would render the contested mark unregistrable.
The extent of the similarity between the two marks was critical because another key factor in the determination of a likelihood of confusion – similarity of goods – weighed heavily against the appellant, United States Polo Association. The goods at issue being identical, the appellant could only succeed if it were able to show that the marks were sufficiently different. However, United States Polo Association failed to convince the CJEU on that point. The Court found the marks to be similar to a medium degree. Considering that sheets, pillows, and other articles covered by the marks are purchased by average consumers who do not generally pay particular attention when buying this type of goods, consumer confusion as to the source of the goods was likely.
The analysis which led the Court to conclude that the marks were similar proceeded along the following lines: Comparison of the marks must be made by examining each of those marks as a whole, which does not mean that the overall impression may not, in certain circumstances, be dominated by one or more of the components. If all the other components of the mark are negligible, assessment of the similarity can be carried out solely on the basis of the dominant element. In this case, the word “Polo” was the dominant element in the contested mark, but the Court did not base its decision solely on the similarity of that word and the word “Polo” in the earlier mark, because the two remaining words – “U.S.” and “Assn.”, which do not appear in the earlier mark – were not negligible. Apparently, however, the two words were not material enough to outweigh the similarity between the two marks stemming from the presence of the word “Polo”. That similarity existed at the visual, phonetic, and conceptual level.
That United States Polo Association stood a weak chance of succeeding is all the more clear if one considers that in another recent case, Shaker di L. Laudato & C. Sas v. OHIM (2008), the then-Court of First Instance found confusing similarity between the two marks used for lemon liqueurs – “Limonchelo” and “Limoncello” – even though the latter mark included, apart from the word “Limoncello”, the representation of a sizable plate decorated with lemons (clearly a distinctive component), as well as four additional words, “della Costiera Amalfitana” and “shaker”, written in smaller letters. Based on a global assessment of the signs, the Court of First Instance found that there was a likelihood of confusion because of the similarity of the dominant word(s) – Limonchelo and Limoncello.
It may then come as a surprise to the reader that the appellant in this case, United States Polo Association, in fact does have a trademark registered with OHIM under the name “U.S. Polo Association“, in the same class (24) as the rejected “U.S. Polo Assn.” mark. “U.S. Polo Association” was registered in July 2008, after the OHIM Opposition Division rejected on February 25, 2008, the opposition by the very same Textiles CMG, S.A. (the decision can be found via search on OHIM’s website).
The only difference between the two cases – the difference between the words “Association” and “Assn.” in the two marks held by the US-based enterprise – strikes one as not significant enough to account for the difference in the outcomes. Yesterday, the Court of Justice did not address the matter, because the General Court foreclosed any further discussion by saying in the last year’s judgment that “the question whether a sign may be registered as a Community trade mark must be assessed solely on the basis of [R]egulation [No. 40/94], as interpreted by the Courts of the European Union, and not on the basis of a previous practice of OHIM” (para. 54 of the judgment of 13 April 2011). Itwould follow from that statement that, if OHIM has misapplied the Community law by rejecting the opposition to the mark “U.S. Polo Association”, that is of no bearing on the Court’s decision-making.
When the Opposition Division of OHIM concluded in February 2008 that the marks “U.S. Polo Association” and “Polo-Polo” were dissimilar overall, it reasoned that any similarity of the marks stemming from the word “Polo” as the common element was “significantly lessened” by the fact that the two marks differed in their beginning (“U.S.” instead of “Polo”), their middle (“Polo” versus “Polo-Polo”) and their ending (“Association” instead of “Polo”). The Division considered especially important the difference in the beginning, because it is the beginning of a sign that normally attracts consumers’ attention initially. The Opposition Division also stated that “Polo” was not the dominant element in the mark “U.S. Polo Association”, because it was combined with the other elements and was placed in a middle position.
When, however, the United States Polo Association attempted to register “U.S. Polo Assn.” as a mark, the Opposition Division upheld the opposition by Textiles CMG, S.A., on April 17, 2008. The Opposition Division found “U.S. Polo Assn.” and “Polo-Polo” similar overall. That decision is currently unavailable on the website of OHIM, but one is tempted to conclude that the decision cannot be reconciled with the earlier decision concerning the mark “U.S. Polo Association”. The difference between the two cases, as stated above, lies in the use of the word “Association” in the former and “Assn.” in the latter case. The difference is admittedly of some significance, because – as the Opposition Division said in February 2008 – the European Community public would attribute a conceptual value to the word “association”, the word being widely used at an international level, whereas (as the OHIM Board of Appeal and CJEU have said) the public not having knowledge of English language would not perceive the word “Assn”. However, in the analysis of the overall similarity of the marks, the presence of the word “association” is unlikely to offset the similarity produced by the common word “Polo”.
In addition, the CJEU has expressly rejected the assertion from the February 2008 decision by the Opposition Division, that the beginning of the mark applied for – the initials “U.S.” – is the part that particularly attracts the relevant public’s attention. The Court has reasoned that “the acronym [U.S.], which stands for the United States of America, would be perceived by the non-English speaking section of the relevant public, ‘at most as relating to the geographical origin of the goods, and cannot therefore be regarded as being particularly distinctive’” (para. 23 of the judgment of 6 September 2012, quoting from para. 36 of the judgment of 13 April 2011).
Perhaps the only new issue addressed in yesterday’s judgment concerns the claim by the United States Polo Association that the General Court, in the judgment of 13 April 2011, impermissibly treated the word “Polo” as “independently distinctive” in the meaning given to that term by the Court of Justice in theMedion case (2005). In the judgment in that case, the Court said that, in a particular case, an earlier mark used by a third party in a composite sign has an independent distinctive role leading the public to believe that the goods or services at issue derive, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established. According to the appellant in the case reviewed in this post, the General Court (in the April 2011 judgment) treated the word “Polo” as “independently distinctive” solely because the word also appears in the earlier mark (“Polo-Polo”), and based on that erroneous approach the court found against the United States Polo Association. Yesterday, however, the Court rejected this allegation by the appellant: the General Court simply did not apply the principle laid down in Medion concerning the independent distinctive role. Nor was that principle applied by the Court of Justice in the judgment of the 6th of September.
