CANCELLATION No 40 780 C (INVALIDITY)

The Polo/Lauren Company L.P., 650 Madison Avenue, New York, New York 10022, United States of America (applicant), represented by Cabinet Cande-Blanchard-Ducamp, Avenue de Messine 5, 75008 Paris, France (professional representative)

a g a i n s t

Minwen Xiao, No. 001, Zaohekeng Group, Duankeng Village, Guanxi Town, Taihe County, Ji'an, Jiangxi, People’s Republic of China (EUTM proprietor), represented by Teodoru I.P. SRL, 12 Nerva Traian Street, Building M37, 1st Entrance, 1st Floor, Suite 1, District 3, 031176 Bucharest, Romania (professional representative ).

On 28/07/2020, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 15 715 204 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 15 715 204 ‘VICUNA POLO’. The application is based on European trade mark registration No 4 049 334 ‘POLO’. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR and Article 8(5) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

a) The goods

The goods on which the application is based are the following:

Class 18: Leather and imitations of leather, handbags, backpacks, school bags, beach bags, travelling bags, haversacks, bags for campers, fur-skins, attaché cases, pocket wallets, school satchels and briefcases, backpacks, beach bags, briefcases, card cases, key cases, pocket wallets, purses, school satchels.

Class 25: Clothing, underclothing; scarves, belts, underwear; ties, scarves, mufflers, shawls; wristbands; but not including shirts other than dress shirts, and not including garments with polo necks, and not including any of the aforesaid goods being sports clothing intended for use in playing polo.

The contested goods are the following:

Class 18: Pocket wallets; school bags; school satchels; handbags; travelling bags; briefcases; valises; haversacks; key cases; bags; credit card cases; business card cases; animal skins; pelts; imitation leather; purses; card cases [notecases]; bags for sports; trunks [luggage]; travelling trunks; suitcases; randsels [Japanese school satchels].

Class 25: Neckties; scarves; collars; suspenders; braces for clothing [suspenders]; belts [clothing]; girdles; money belts [clothing]; shawls; neck scarves [mufflers].

As a previous remark it must be clarified that, when the applicant states in the Notice of Application on which goods in Class 25 the application is based, the applicant does not include the limitation recorded in relation to those goods. However, this limitation must be taken into account given that the scope of goods on which the application is based cannot be broader than what the mark is registered for.

Contested goods in Class 18

The contested pocket wallets; school bags; school satchels; handbags; travelling bags; briefcases; valises; haversacks; key cases; bags; credit card cases; business card cases; animal skins; pelts; imitation leather; purses; card cases [notecases]; bags for sports; trunks [luggage]; travelling trunks; suitcases; randsels [Japanese school satchels] are identical to the applicant’s goods in this class, either because they are identically contained in both lists (including synonyms) (for example school bags) or because the applicant’s goods include the contested goods (card cases vs. credit card cases), or vice versa (bags vs. beach bags), or the goods overlap (for example bags for sports vs. backpacks).

Contested goods in Class 25

The contested goods in Class 25 are all identical to the goods protected by the earlier mark either because they appear verbatim, or because they at any rate overlap with the general category of clothing; but not including shirts other than dress shirts, and not including garments with polo necks, and not including any of the aforesaid goods being sports clothing intended for use in playing polo protected by the earlier mark.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large, whose degree of attention in relation to the goods is, on the whole, average.

c) The signs

POLO	VICUNA POLO
Earlier trade mark	Contested trade mark

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The common element ‘POLO’ means, for the English-speaking part of the public, ‘a game played between two teams of players. The players ride horses and use wooden hammers with long handles to hit a ball’ and also ‘polo neck: a collar on a garment, worn rolled over to fit closely round the neck’. The element of the contested mark ‘VICUNA’ appears as such in the place of ‘VICUÑA’ (or at any rate is very similar to it) and means: a ‘fine light cloth made from the wool obtained’ from the animal of the same name from this animal (Collins online dictionary, all definitions retrieved on 21/07/2020). Given the fact that both words have a meaning in English, the Cancellation Division finds it appropriate to focus the comparison of the signs on this part of the relevant public.

None of the signs have elements that can be considered more dominant (visually eye-catching) than others. As for the distinctiveness of their elements, given the limitation of the goods in the earlier mark, the word ‘POLO’ is distinctive for them, but descriptive for ‘collars’ in the contested mark. As for Class 18, some of the goods such as bags for sports, for example, or backpacks, can be used to play polo and hence the word is weak for them.

‘VICUNA’ can refer to the fabric with which some garments of clothing are made and, consequently, for some of the goods in Class 25 the term is of low distinctiveness.

Visually and aurally, the signs coincide in ‘POLO’ and differ in the term ‘VICUNA’ of the contested mark; however, this term has, as mentioned above, a low degree of distinctiveness in relation to some of the goods in Class 25, as does ‘POLO’ in connection to ‘collars’ and some goods in Class 18. However, the marks will be similar to a high degree in these two levels of comparison, given that, if ‘POLO’ is distinctive, it will be the most relevant element and, if it is not, it will be as descriptive as ‘VICUNA’. For some of the goods in Class 18 for example pocket wallets, both terms are distinctive, and in connection with these goods the marks have an average degree of similarity.

The Cancellation Division refers to the considerations made above relating to the meaning of the terms that compose the words, to the distinctiveness of the terms and to the difference of distinctiveness of ‘VICUNA’ in connection with the goods in Class 18 and 25, and ‘POLO’ regarding ‘collars’ and some goods in Class 18, as well as the level of similarity of the marks following this difference. Therefore, conceptually the marks either have a high degree of similarity or an average degree of similarity.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the applicant, the earlier trade mark enjoys a high degree of distinctiveness as result of its long-standing and intensive use in the European Union for all the goods for which it is registered (see above). This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528), and, therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442).

The applicant explains that the POLO brand has been used for more than 52 years by THE POLO/LAUREN COMPANY L.P. to designate one of its iconic lines of clothing and accessories. The applicant’s trademark is widely exploited, to the extent that it constitutes one of the emblematic signs of this Company. The attached advertising campaigns indisputably provide a demonstration of this (Evidence No. 20).

The sign ‘POLO’ is used across its range of products RALPH LAUREN, is thus found in very many types of products, ranging from clothing, from shirts, to jackets, cardigans, t-shirts, shorts, jeans, swimwear, caps, boots, sandals, etc., and is also widely used for goods in Class 18. The applicant 's trade mark is also widely exploited especially for goods of the class 18 and 25, the various documents served through these proceedings indisputably provide a demonstration of the large use and communication/advertising on this trademark (Evidence No. 18).

In addition to its core lines of ‘POLO’ clothing, the applicant also operates various sportswear lines that all share its core brand ‘POLO’; Furthermore, it should also be noted that the trademark ‘POLO’ is widely promoted in the sports sponsorship campaigns of the RALPH LAUREN brand, for international sports tournaments, such as the Wimbledon Tennis Tournament (Evidence No. 25), the US OPEN tennis tournament (Evidence No. 26). It can also be noted that the ‘POLO’ trademark is omnipresent on RALPH LAUREN's official social networks. Social networks such as Instagram or Facebook are nowadays essential means of communication in the fashion industry. The Opponent's Facebook account has more than nine million subscribers and the Instagram account has more than 11 million subscribers (Evidences No. 33 No. and No. 34).

In relation to the data contained in evidence No. 28 the applicant explains that net sales of products under the applicant ’s trademark in Europe reached more than US Dollar 575,000,000 in 2005 and grew up steadily until it reached US Dollar 1,591,000,000 in 2018.

Regarding the contents of Evidence No. 29 the applicant explains that in the European Union, more than 4 million men clothes bearing the ‘POLO’ trademark were sold in 2013, 2014 and 2015. In 2016, more than 5 million men clothes bearing the ‘POLO’ trademark were sold.

Regarding the contents of Evidence No. 30 and No. 31 the applicant states that the total amount spent on media throughout Europe to advertise and promote all polo Ralph Lauren brands reached more than US Dollar 2,000,000 in 1991 and grew up to US Dollar 9,000,000 in 2003, and that the total amount spent on media throughout Europe to advertise and promote all POLO Ralph Lauren brands reached more than EUR 43,000,000 in 2015, EUR 49,000,000 in 2016, EUR 38,000,000 in 2017, and EUR 39,000,000 in 2018. In this period, the portion of the POLO’s advertising in the Marketing investments increased from 51% to 76%. The share of investments increased since 2015, which is the sign that the POLO/LAUREN COMPANY L.P. highlights its POLO line.

The applicant states that the efforts made by THE POLO/LAUREN COMPANY L.P. allowed to enhance the distinctiveness of the trademark ‘POLO’. Indeed, the Company uses this sign since 1967, invests massively in advertising campaign worldwide and on the European territory, and commercializes products under the clothing line ‘POLO’ with success since decades. It is consequently a very strong rallying sign, such that, on seeing this sign, the relevant consumer immediately makes a reference with the applicant ’s trademark. As an example (Evidences No. 14 and No. 15), the press refers to the ‘POLO’, amongst other terms, as:

• Press article on the website magazine.lebonmarche.com talking about the opening of a new Ralph Lauren shop : ‘It’s in 1967 that the ‘POLO’ label see the light of the day’ and talk about the ‘masculine universe of Polo’

• Press article on the website femmezine.fr mentions the first Ralph Lauren clothing line, ‘Polo, [which] is created in 1967’

• Press article on the website retailblog.fr, which looks at the opening of the ‘Polo Bar’ by Ralph Lauren, in New York, ‘A shop dedicated to the clothing line Polo’

• Press article on the madame.lefigaro.fr website, talking about the show presenting the women Polo collection: ‘(…) his 4D show presented on Tuesday for the women Polo collection, which has brought 1.7 billion views on internet’.

• On the website thrifted.com, an article about ‘A history of Ralph Lauren’: ‘The business began in 1967 […] Lauren designed a menswear, then a womenswear collection, under the name POLO Ralph Lauren’

• On the website hypebeast.com ‘Ralph Lauren launches new POLO App to help Celebrate its 50th-Anniversary’.

• On vogue.com, about the 2019 spring collection of Ralph Lauren: ‘His Polo line bears many of the designer’s most beloved hallmarks.’

• On the Forbes website, in an article about the new Polo App, it is evoked the ‘POLO line’.

According to the applicant, this evidence demonstrates that the company has sold, promoted and advertised a wide range of products, and more specifically many clothing, headgear, footwear, bearing the word trademark ‘POLO’. The sales of the goods under the applicant’s trade mark demonstrate an intensive use in the relevant territory, furthermore it is clear that the applicant has spent a considerable amount of money promoting the ‘POLO’ trademark and that the applicant ’s trade mark has a consolidated position in the market.

The Office also regularly considers that the ‘POLO’ brand has an enhanced distinctiveness and has acquired a reputation on the market (see Evidence No. 35)

The applicant filed the following documents:

 Evidence No. 1 Copy of the registration certificate of the Earlier Mark.

 Evidence No. 2 Copy of the registration certificate of the Contested Mark.

 Evidence No.3. RALPH LAUREN – Remote selling Tool – Fall 2019.

 Evidence No.4. RALPH LAUREN – Catalogue Accessories POLO – Autumn 2019.

 Evidence No.5. RALPH LAUREN – Catalogue Accessories POLO – Spring 2019.

 Evidence No.6. RALPH LAUREN – Doted stats - All categories 2018.

 Evidence No.7. RALPH LAUREN – Remote selling Tool – Spring 2018.

 Evidence No.8. RALPH LAUREN – Catalogue Accessories POLO – Spring 2018.

 Evidence No.9. RALPH LAUREN – Catalogue Accessories POLO – Autumn 2017.

 Evidence No.10. Remote selling Tool – Cruise 2016.

 Evidence No.11. RALPH LAUREN – T-shirts – Cruise 2016.

 Evidence No.12. RALPH LAUREN – Catalogue Accessories - Cruise 2016.

 Evidence No.13. RALPH LAUREN – Catalogue Accessories POLO – Spring 2015.

 Evidence No.14. Press clipping using the Trademark ‘POLO’.

 Evidence No.15. Press articles concerning Ralph Lauren 50th Anniversary.

 Evidence No.16. RALPH LAUREN HISTORY – extracts of the book.

 Evidence No.17. RALPH LAUREN actual websites’ extracts, which show the POLO clothing line on website: https://www.ralphlauren.fr/en.

 Evidence No.18. Previous use examples of the ‘POLO’ trademark.

 Evidence No.19. RALPH LAUREN stores in Europe.

 Evidence No.20. Advertising POLO campaign.

 Evidence No.21. Media plan ‘POLO’.

 Evidence No.22. Use examples of ‘POLO GOLF’.

 Evidence No.23. Use examples of ‘POLO TENNIS’.

 Evidence No.24. Use examples of ‘POLO SPORT’.

 Evidence No.25. Evidence concerning the Wimbledon Tennis Tournament (Ralph Lauren Official Outfitter).

 Evidence No.26. Evidence concerning the US OPEN tennis tournament (Ralph Lauren Official Outfitter).

 Evidence No.27. Evidence concerning the Olympic Games, for which RALPH LAUREN dresses the official US teams.

 Evidence No. 28: Certified Polo Ralph Lauren Net Sales in Europe 2005-2018.

 Evidence No. 29: Branding Units FY11 to FY16 wholesales POLO in European Union.

 Evidence No.30. Polo Ralph Lauren advertising expenditures in Sweden and Europe for the financial years 1991 / 2003 including France.

 Evidence No.31. Ralph Lauren EMEA Marketing investments FY04-18 for Polo only in the European Union.

 Evidence No.32. Best Global Brands Ranking (2012 to 2016).

 Evidence No.33. Evidence concerning RALPH LAUREN / POLO RALPH LAUREN Instagram social network.

 Evidence No.34. Evidence concerning RALPH LAUREN Facebook social network.

 Evidence No.35. Case law (various decisions).

Although part of the evidence refers to other marks of the applicant (notably the polo player on the horse), it is clear from the evidence that the earlier trade mark is generally known in the relevant market given that it has been used intensely for a long time. This can be inferred from the combination of the documents submitted, specially from the amount of stores of the applicant in Europe that sell the mark, the fact that the mark was the official outfitter of international events for several years, such as ‘The Wimbledon Championships’ and the ‘US OPEN tennis tournament’, as well as the official dresser for the US team in the Olympic Games. Furthermore, the financial figures shown by the evidence are substantial, and it is evident that the mark has been advertised widely.

On the other hand, the evidence in relation to long standing use concerns, mainly, the goods in Class 25.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabel, EU:C:1997:528, § 22).

In the case at issue the signs have been deemed visually, aurally and conceptually similar at least to an average degree given the fact that the earlier mark is fully reproduced in the contested mark, the earlier trade mark has an enhanced degree of knowledge among the public for goods in class 25, being the public concerned average consumers, with a degree of attention which is also average. Under these circumstances, the word ‘VICUNA’ present in the contested mark cannot dispel the likelihood that the public will think that the identical or highly similar goods originate in the applicant or in undertakings with economic ties.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

Therefore, the application is well founded on the basis of the applicant’s European Union trade mark No 4 049 334, and therefore the contested trade mark must be declared invalid for all the contested goods.

Since the application is fully successful on the grounds of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the application, namely Article 8(5) EUTMR in conjunction with Article 60(1)(a) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Natascha GALPERIN

María Belén IBARRA DE DIEGO

Judit NÉMETH

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.