The Royal County of Berkshire Polo Club Limited (“the Royal Berkshire”) has had a disappointing outcome to its Appeal against the Judgment of the OHIM Board of Appeal over trademarks of the Beverley Hills Polo Club (“Beverley Hills”), owned by Lifestyle Equities CV.
In 2001, the Royal Berkshire – founded in 1985 close to Windsor Castle and whose first member is reported to be HRH The Prince of Wales - filed an application for registration of a Community Trade Mark in classes 9 (spectacles and sunglasses), 14 (watches and jewellery), 18 (leather goods, whips, harnesses and saddlery) and 25 (clothing) which was published in the Community Trade Marks Bulletin on 7 March 2011.
Lifestyle Equities CV subsequently filed a Notice of Opposition claiming that there was a likelihood of confusion with its earlier registered Beverley Hills Marks in similar use classes. Lifestyle’s opposition was rejected in its entirety in 2012 and an Appeal was lodged, which was heard in 2013. A likelihood of confusion was found to exist, and also that the signs had some visual similarity and significant conceptual similarity.
The Royal Berkshire launched a further Appeal, this time to the Court of Justice of the European Communities, in which Judgment was given on 26 March 2015. The CJEC considered the likelihood of confusion, based on the overall impression produced by the signs, account being taken in particular of their distinctive and dominant components. Both signs represented a polo player in motion wielding a mallet and had the words “Polo Club” in common.
There were slight differences in that the Royal Berkshire polo player faces left and holds his mallet upright, while the Beverley Hills player faces right and holds his mallet ready to strike the ball, but those slight differences were not sufficient to reduce significantly the similarity of the signs. Both display the figure of a polo player astride a galloping horse. The general public would recognise clearly and remember the image of a mounted polo player. The comparison must be made by examining the signs as a whole, not just individual components.
The Court also reminded the parties that, according to case law, in the global assessment of the likelihood of confusion the visual, oral or conceptual aspects of the signs at issue do not always have the same weight. What must be examined is the objective conditions under which the marks may be present on the market. Most of these goods are usually sold in self-service stores where consumers choose the goods themselves. The visual aspect is thus more important than the aural aspect and the differences between the word elements of the marks were not sufficient to preclude the likelihood of confusion.
Save for whips, harness and saddlery there was a likelihood of confusion between the signs. The decision on those products was reversed in Royal Berkshire’s favour but the refusal of the remainder of the applications stood and the applications were thrown (or is that chukka-d?) out. Each party had to pay its own (presumably significant) costs.
This serves as a good example that even the big players sometimes get it wrong on trademark applications.
For guidance on trade mark registration and how best to protect your intellectual property against unfair competition and passing off, contact Tony Catterall, Head of the Intellectual Property Team at Taylors, on 01254 297900 or via email at firstname.lastname@example.org. Taylors is the only North West based firm to have been appointed as a legal affiliate to the National organisation Anti Copying In Design (“ACID”).