U.S. POLO ASSN. confusingly similar to POLO-POLO

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United States Polo Association v OHIM, Case C-327/11

In rejecting all grounds of an appeal on 6 September 2012, the Court of Justice of the European Union ("CJEU") considered the application of the Medion case when comparing elements in composite marks.

United States Polo Association ("US Polo") applied for a Community Trade Mark for the word sign "U.S. POLO ASSN." covering a number of textile goods in Class 24.  Textiles CMG ("CMG") opposed based on a likelihood of confusion with its earlier Spanish and Community Trade Mark registrations in Class 24 for POLO-POLO.

The CJEU disagreed that the General Court had disregarded the Medion principles in finding that the word "POLO" had an independent distinctive role in the mark applied for when considered overall and put the relevant public in a position to recognise it by the element that it has in common with the earlier mark. The General Court had properly made an overall assessment of the marks at issue, taking into account all relevant factors and had decided that this was a different circumstance to the type referred to in Medion.

The CJEU also disagreed that the General Court had attributed excessive importance to the common element "POLO" or failed to compare the marks at issue as a whole. Instead, the General Court had found that the "U.S." and "ASSN." elements were of weak distinctive value.  This ground of appeal was also held inadmissible as it questioned a factual assessment rather than a point of law. Similarly, an appeal that the General Court failed to take into account the repetition of the element "POLO" in the earlier mark was also dismissed as inadmissible for only concerning the factual assessment made by the General Court.

Comment

This case serves as a reminder that the CJEU will only consider appeals based on questions of law and not matters of fact. It is therefore vitally important to present all evidence and submissions on the factual circumstance of the case early in the process. 

Owners of trade marks containing abbreviations of English words should also assume EU-wide recognition of such abbreviations at their peril, even where they would be easily recognisable by the English speaking public.  US Polo had not shown that the non-English speaking section of the relevant public would understand the meaning of the abbreviation "ASSN, which could have impacted on a finding of likelihood of confusion.

Claire Keepax, Trade Mark Attorney in the IP protection Group at Field Fisher Waterhouse LLP.