CANCELLATION No 46 741 C (INVALIDITY)

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

a g a i n s t

Britain Williampolo Group Limited, RM 1502 (146) Easey Comm BLDG 253‑261 Hennessy RD Wanchai, Hong Kong, Hong Kong Special Administrative Region of the People’s Republic of China (EUTM proprietor), represented by Marcella Clarke, 2 Greendale Avenue, Raheny, Dublin 5, Dublin, Ireland (professional representative).

On 03/05/2021, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 18 174 705 is declared invalid in its entirety.

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

REASONS

On 09/10/2020, the applicant filed a request for a declaration of invalidity against European Union trade mark No 18 174 705 (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM. The application is based on EUTM registration No 4 049 334 ‘POLO’. The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) and Article 8(5) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that, given the enhanced distinctiveness of the earlier mark, the identity of the goods, and the similarities between the signs, there is a likelihood of confusion, including a likelihood of association. It submitted evidence to demonstrate the enhanced distinctiveness and reputation of the earlier mark (listed and assessed below) and argues that the earlier trade mark, ‘POLO’, has been used since 1967. It further argues that it has massively invested in advertising campaigns worldwide and in the European Union, and successfully sold goods in Class 25 under the trade mark ‘POLO’ for decades.

The EUTM proprietor did not submit any observations, despite having been invited to do so.

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 25: Clothing, clothing for men, women, children and infants, dresses, sleepwear, mittens, swimwear, underwear; footwear for men, women, children, and infants shoes, headgear for men, women, children, and infants hats, ties, hosiery.

The contested goods are the following:

Class 25: Clothing for men, women and children; layettes [clothing]; swimsuits; footwear [excluding orthopedic footwear]; headgear for wear; hosiery; gloves; neckties; girdles; wedding dresses.

Clothing for men, women and children; swimsuits; hosiery; neckties are identically contained in both lists of goods (including synonyms).

The contested footwear [excluding orthopedic footwear] includes, as a broader category, the applicant’s footwear for men, women, children, and infants shoes. Likewise, the contested headgear for wear includes the applicant’s headgear for men, women, children, and infants hats. Since the Cancellation Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the applicant’s goods.

The contested layettes [clothing]; gloves; wedding dresses are included in the broad category of the applicant’s clothing. Therefore, they are identical.

The contested girdles are included in the broad category of the applicant’s underwear. Therefore, they are identical.

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. The degree of attention is average.

c) The signs

POLO
Earlier trade mark	Contested sign

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 earlier mark, ‘POLO’, will be perceived by part of the public as referring to the game of polo, which is played between two teams of players riding on horses. Although the goods in Class 25 can be used for playing polo, there is nothing in their description to the effect that they are specifically designed for that purpose. Therefore, ‘POLO’ is distinctive to an average degree (20/06/2018, T‑657/17, HPC POLO / POLO et al., EU:T:2018:358, § 33; 26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49). In some languages, such as French and Spanish, ‘POLO’ also refers to a type of short-sleeved shirt with a collar, and is therefore weak in relation to clothing. For part of the public, ‘POLO’ is also likely to be seen as a surname, such as the surname of the famous Italian trader and explorer Marco Polo. Since it has no meaning in relation to the goods, it is distinctive to an average degree.

As regards the contested sign, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). The component ‘WILLIAM’ will be perceived as a male first name, since it is very popular – for example, the famous English playwright, poet and actor William Shakespeare or Prince William (member of the British royal family). Due to its position after the first name ‘WILLIAM’, ‘POLO’ is likely to be perceived as the surname of a person called ‘William Polo’. Since these components have no meaning in relation to the relevant goods, they are distinctive to an average degree.

Family names have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. This is because common experience shows that the same first names may belong to a great number of people who have nothing in common, whereas the presence of the same surname (provided it is not common in the relevant territory) could imply the existence of some link between them (the same person or a family link).

Visually, the signs coincide in the component ‘POLO’, which constitutes the entire earlier mark and the second component in the contested sign. They differ in the contested mark’s component ‘WILLIAM’. Although the contested mark is figurative, it is depicted in a rather standard typeface (upper-case letters). Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the component ‘POLO’ present identically in both signs. The pronunciation differs in the sound of the contested mark’s component ‘WILLIAM’, which has no counterpart in the earlier mark. Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions regarding the semantic content of the signs. For at least part of the public, the signs share the same surname ‘POLO’ and, to that extent, they are similar to an average degree (28/06/2012, T‑134/09, B. Antonio Basile 1952, EU:T:2012:328, § 60). For the part of the public that will not perceive the earlier mark, ‘POLO’, as a surname, but as the game of polo or a type of shirt, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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 a result of its long-standing and intensive use in the European Union for all the goods on which the application is based (listed 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, § 18).

The applicant submitted the following evidence:

 No 1: extract from eSearch plus related to the earlier mark;

 No 2: extract from eSearch plus related to the contested mark;

 No 3: ‘POLO RALPH LAUREN’ – remote selling tool – autumn 2019;

 No 4: ‘RALPH LAUREN’ –accessories line catalogue, ‘POLO’ – Autumn 2019;

 No 5: ‘RALPH LAUREN’ –accessories line catalogue, ‘POLO’ – Spring 2019;

 No 6: ‘RALPH LAUREN’ – ‘POLO’ catalogue, Cruise 2017;

 No 7: ‘POLO RALPH LAUREN’ – remote selling tool – Spring 2018;

 No 8: ‘RALPH LAUREN’ – accessories catalogue, ‘POLO’ – Spring 2018;

 No 9: ‘RALPH LAUREN’ –accessories catalogue, ‘POLO’ – Autumn 2017;

 No 10: ‘POLO RALPH LAUREN’ - remote selling tool – Cruise 2016;

 No 11: ‘RALPH LAUREN’, ‘POLO’ line – T-shirts – Cruise 2016;

 No 12: ‘RALPH LAUREN’, ‘POLO’ line – accessories catalogue – Cruise 2016;

 No 13: ‘RALPH LAUREN’ – accessories catalogue, ‘POLO’ – Spring 2015;

 No 14: press clipping referring to the ‘POLO’ trade mark;

 No 15: press articles concerning RALPH LAUREN’s 50th Anniversary;

 No 16: RALPH LAUREN HISTORY – extracts from the book and website;

 No 17: extracts from RALPH LAUREN’s French websites, dated 2014-2020 (www.ralphlauren.fr);

 No 18: examples of previous use of the ‘POLO’ trade mark (German, Italian, Spanish, and UK websites);

 No 19: list of ‘RALPH LAUREN’ stores in Europe;

 No 20: ‘POLO’ advertising campaigns;

 No 21: ‘POLO’ media plans, dated 2010-2014;

 No 22: examples of the use of ‘POLO GOLF’ (French, German, Italian, Spanish, and UK websites);

 No 23: examples of the use of ‘POLO TENNIS’ (French, German, Italian, Spanish, and UK websites);

 No 24: examples of the use of ‘POLO SPORT’ (French, German, Italian, Spanish, and UK websites);

 No 25: evidence concerning the Wimbledon Tennis Tournament (‘RALPH LAUREN’ was the official outfitter , for several years, between 2006 and 2018);

 No 26: evidence concerning the ‘US OPEN’ tennis tournament (‘RALPH LAUREN’ was the official outfitter for several years, between 2005 and 2019);

 No 27: evidence concerning the Olympic Games, for which ‘RALPH LAUREN’ dresses the official US teams;

 No 28: certified ‘POLO RALPH LAUREN’ net sales in Europe between 2005 and 2020;

 No 29: branding units FY11 to FY18, regarding the wholesale of ‘POLO’ products in the European Union;

 No 30: advertising expenditure for ‘POLO RALPH LAUREN’ in Sweden and Europe, including France, for the financial years 1991 to 2003 including France.

 No 31: ‘RALPH LAUREN’ EMEA Marketing investments FY04-18 for the ‘POLO’ brand only, in the European Union;

 No 32: brand rankings showing the ranking position of the brand ‘RALPH LAUREN’ (2000-2019);

 No 33: evidence concerning the ‘POLO RALPH LAUREN’ Instagram social network;

 No 34: evidence concerning the ‘RALPH LAUREN’ Facebook page;

 No 35: case-law (EUIPO opposition and cancellation decisions, INPI opposition decisions, and a decision of the Court of Appeal of Paris dated 17/04/2013);

 No 36: packaging and labelling for ‘POLO RALPH LAUREN’.

Having examined the material listed above, the Cancellation Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through use on the market in relation to clothing, headgear and footwear in Class 25. Even though part of the evidence refers to other marks belonging to the applicant, notably the figurative mark depicting a polo player on a horse, and the mark ‘RALPH LAUREN’, it does prove intensive use of the earlier mark ‘POLO’. Although associated with the other ‘RALPH LAUREN’ mark, ‘POLO’ plays an independent role given that it is positioned above the other mark, in a larger font (14/06/2017, R 2368/2016‑1, HPC POLO / POLO et al., § 50). It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use since 1967 and is generally known in the relevant market. This can be inferred, for example, from the catalogues, press articles, website extracts (from the applicant and third parties), and the promotional material. The mark has also been the official outfitter for certain international events for several years, such as the ‘Wimbledon Championships’ and the ‘US OPEN tennis tournament’. Furthermore, the advertising expenditure and sales figures shown by the evidence are substantial.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods are identical and they target the general public displaying an average degree of attention.

The earlier mark has acquired a high degree of distinctiveness through use on the market in relation to the relevant goods in Class 25.

The signs are visually, aurally, and, for part of the public, conceptually similar to an average degree, given that the earlier mark is fully reproduced in the contested mark, where it will be perceived by the public as an independent element. In the contested sign, the component ‘POLO’ is more distinctive than ‘WILLIAM’, which is a well-known male first name, commonly used in many European countries (such as the English-speaking countries). Even though consumers might be able to distinguish between the signs due to the component ‘WILLIAM’ – which has no counterpart in the earlier mark – they will perceive in the contested mark a specific line of products or an extended form of the earlier mark. Indeed, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Conclusion

Considering all the above, there is a likelihood of confusion, including a likelihood of association, for at least part of the public. A likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid. It is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T‑521/15, D (fig.) / D (fig.) et al., EU:T:2017:536, § 69).

Therefore, the application is well founded on the basis of the applicant’s EUTM registration No 4 049 334. It follows that the contested trade mark must be declared invalid for all the contested goods.

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

Ioana MOISESCU

Frédérique SULPICE

Richard BIANCHI

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.