Polo/Lauren v OHMI - FreshSide (Représentation d'un garçon sur un vélo tenant un maillet) (Judgment) [2014] EUECJ T-265/13 (18 September

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(Community trade mark - Opposition proceedings - Application for the Community figurative mark representing a boy on a bicycle holding a mallet - Earlier Community and national figurative marks representing a polo player - Relative grounds for refusal - Article 8(1)(b) of Regulation (EC) No 207/2009 - Article 8(5) of Regulation No 207/2009)

The Polo/Lauren Company, LP, established in New York, New York (United States), represented by S. Davies, Solicitor, J. Hill, Barrister, and R. Black, Solicitor,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock and N. Bambara, acting as Agents,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being

FreshSide Ltd, established in London (United Kingdom), represented by N. Lockett, Solicitor,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 1 March 2013 (Case R 15/2012-2), relating to opposition proceedings between The Polo/Lauren Company, LP and FreshSide Ltd,

composed of S. Frimodt Nielsen, President, F. Dehousse (Rapporteur) and A.M. Collins, Judges,

having regard to the response of OHIM lodged at the Court Registry on 25 July 2013,

having regard to the response of the intervener lodged at the Court Registry on 4 August 2013,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court,

1 On 17 December 2009, the intervener, FreshSide Ltd, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

3 The goods in respect of which registration was sought are in Classes 18, 25 and 28 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

- Class 28: ‘Gymnastic and sporting articles not included in other classes’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 29/2010 of 15 February 2010.

5 On 28 April 2010, the applicant, The Polo/Lauren Company, LP, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on a number of earlier rights, which were limited in the course of the opposition proceedings to the following earlier marks (taken together, ‘the earlier marks’):

- the Community figurative mark, filed on 29 September 2004 and registered on 3 November 2005 under the number 4049201 in respect of a range of goods in Classes 9, 18, 20, 21, 24 and 25, as reproduced below:

- the national figurative mark, filed on 31 July 1979 and registered in Austria on 14 December 1979 under the number 92629 in respect of a range of goods in Classes 18 and 28, as reproduced below:

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009.

8 On 28 October 2011, the Opposition Division rejected the opposition brought by the applicant in its entirety.

9 On 22 December 2011 the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

10 By decision of 1 March 2013 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. It found, in essence, pursuant to Article 8(1)(b) of Regulation No 207/2009, that the signs at issue were dissimilar overall and that there could therefore be no likelihood of confusion. Furthermore, in view of the fact that the signs at issue were not similar, the Board of Appeal found that one of the cumulative conditions for the application of Article 8(5) of Regulation No 207/2009 was not satisfied.

14 It must be pointed out at the outset that, by its head of claim seeking to have the contested decision upheld, the intervener is in fact claiming that the action should be dismissed.

15 In support of its action, the applicant relies on two pleas in law, alleging infringement, first, of Article 8(1)(b) of Regulation No 207/2009 and, second, of Article 8(5) of Regulation No 207/2009.

The first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

16 The applicant submits that not carrying out a global assessment of the likelihood of confusion is conceivable only if the signs at issue do not have any features in common as regards one or more relevant aspects. In that context, a low degree of similarity between two signs would make it possible to assess the likelihood of confusion globally. The applicant maintains that, in the present case, the Board of Appeal should have taken the enhanced distinctiveness of the earlier marks into account in analysing the similarity of the signs at issue. In any event, the visual and conceptual similarities between those signs, which the applicant specifies, could not have led the Board of Appeal to conclude that the signs at issue were dissimilar overall. In particular, as regards the importance which the Board of Appeal attached to the graphic representation of a bicycle in the mark applied for, the applicant submits that such a difference could only lead to a finding that the signs at issue are dissimilar overall if the other elements of those signs were negligible. According to the applicant, that is not the case here. Consequently, the applicant maintains that the Board of Appeal erred in not carrying out a global analysis of the likelihood of confusion and in not considering whether there was a likelihood of association between the signs at issue.

17 OHIM states that the differences between the signs at issue prevail over their similarities. In particular, OHIM emphasises the particular importance attaching to the difference in mount (bicycle or horse) in the two signs. Consequently, there is a visual dissimilarity in the overall impression given by the signs at issue. OHIM submits that the Board of Appeal was also correct to find that the signs at issue were not conceptually analogous, inter alia in light of their different prevailing conceptual contents. In addition, OHIM maintains that there is no need to take the enhanced distinctiveness or reputation of the earlier marks into account in assessing the similarity of the signs at issue. Furthermore, in OHIM’s view, those factors could not mitigate the differences between the signs at issue to the point of conferring excessive weight on the features that they have in common. Lastly, it maintains that the lack of similarity between the signs at issue did not allow the Board of Appeal to conclude that there was a likelihood of confusion, even though the goods at issue are identical. As regards the likelihood of association put forward by the applicant, OHIM submits that it is insufficient to conclude that there is a likelihood of confusion. In addition, OHIM takes the view that, as there is no similarity between the signs at issue, the Board of Appeal was entitled to disregard the evidence submitted by the applicant in that regard.

18 The intervener submits that the Board of Appeal did not err in finding that the signs at issue were dissimilar overall. In particular, the intervener states that the only similarity between the two signs at issue is the polo mallet held by the player, which is, however, raised in opposite directions. Any other similarities between the signs at issue, in particular those put forward by the applicant in its written pleadings, are negligible or trivial. By contrast, the other elements of the signs at issue, such as the bicycle or the horse are significant. The intervener states that it has already registered a Community trade mark that is very similar to the mark applied for. Furthermore, the intervener submits that the representation of a polo player on a bicycle conceptualises an emergent urban sport, which is played on tennis courts or in school playgrounds. That sport is therefore different visually and conceptually from the traditional sport of polo. In those circumstances, the Board of Appeal was correct to find that there could not be any likelihood of confusion and it was not required to carry out a global assessment of that likelihood of confusion or to analyse any enhanced distinctiveness that the earlier marks might have. The intervener states in that regard that the reputation of the earlier mark may not be used to establish the similarity of the two marks at issue. The Board of Appeal was also justified in discounting the evidence that the applicant put forward to show that there was a likelihood of association on the part of the relevant public, which is not an alternative to a likelihood of confusion.

19 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(i) and (ii) of Regulation No 207/2009, ‘earlier trade marks’ means, respectively, Community trade marks and trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

20 In the present case, the Board of Appeal found, in essence, that, irrespective of the reputation of the earlier marks, the signs at issue were dissimilar overall, with the result that one of the conditions for the application of Article 8(1)(b) was not satisfied, even though the goods at issue were identical.

21 It is therefore necessary to examine whether the Board of Appeal was correct in finding that the signs at issue were dissimilar overall.

22 The global assessment of the likelihood of confusion, as far as the visual, phonetic or conceptual similarity of the signs in question is concerned, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 35 and the case-law cited).

23 It is also apparent from the case-law that two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (see Case T-385/09 Annco v OHIM - Freche et fils (ANN TAYLOR LOFT) [2011] ECR II-455, paragraph 26 and the case-law cited).

24 At the visual level, the Board of Appeal attributed ‘considerable weight’ to the fact that one of the signs contained the graphic representation of a bicycle, whereas the others contained that of a horse. As far as the Board of Appeal was concerned, that difference ‘is clearly and immediately noticeable and will, in spite of their imperfect recollection, remain in the relevant public’s memory’. The Board of Appeal thus concluded in paragraph 30 of the contested decision that the signs at issue were visually dissimilar.

25 In the first place, although the contested decision is ambiguous in its wording, the Board of Appeal appears to have taken the view that the graphic representation of a bicycle in the mark applied for constituted, at least, a dominant element of that mark. There is, however, nothing to support such a conclusion. First of all, it must be borne in mind that the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details. Second, from a visual point of view, it must be pointed out that the graphic representation of a bicycle occupies an amount of space similar to that of the graphic representation of a person holding a polo mallet, with the result that one of those representations cannot be given more weight than the other. Furthermore, the fact that the polo mallet is situated above the polo player has the effect of making that accessory clearly visible in the representation of the signs at issue. That element, contrary to what the intervener maintains in its written pleadings, cannot be regarded as negligible in the signs at issue.

26 In the second place, although it is true that the graphic representation of a bicycle in the mark applied for constitutes an appreciable difference between that mark and the earlier marks, the fact remains that the similarities between the signs at issue cannot be categorised as negligible or insignificant as the intervener claims. In particular, as was, moreover, pointed out by the Board of Appeal, the signs at issue represent a person holding a polo mallet in the air. In both cases, the person is not represented in any specific colour. Furthermore, as the applicant correctly points out in its written pleadings, the person in the signs at issue is represented head on, but slightly in profile, at quite similar angles. The same is true of the angle formed by the polo mallet. Furthermore, in both cases, the graphic representation gives the impression that the persons are in motion, which the intervener does not, moreover, dispute. Lastly, as the applicant observes, the relative dimensions of the signs at issue (that is to say, the ratio between the height and the width of the signs) are quite similar. It is correct, as the Board of Appeal pointed out and as the intervener states, that the horse is galloping towards the left, whereas the bicycle is going towards the right. However, given the angles used, including that used for the polo mallet, and the relative dimensions of the signs at issue, a visual comparison of those signs gives the impression of a certain symmetry.

27 In view of those considerations, the signs at issue cannot be held to be visually dissimilar as the Board of Appeal nevertheless found them to be in paragraph 30 of the contested decision. The signs at issue have, at least, a low degree of visual similarity.

28 At the phonetic level, the Board of Appeal endorsed the Opposition Division’s reasoning and correctly found, in essence, that a comparison was not relevant inasmuch as the signs at issue do not contain any word elements (see, to that effect, Case T-424/10 Dosenbach-Ochsner v OHIM - Sisma (Representation of elephants in a rectangle) [2012] ECR II-0000, paragraph 45, and Joined Cases T-5/08 to T-7/08 Nestlé v OHIM - Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe) [2010] ECR II-1177, paragraph 67). Moreover, the parties do not call into question the Board of Appeal’s finding in that regard.

29 At the conceptual level, the Board of Appeal endorsed the Opposition Division’s reasoning and found that the features that the signs at issue have in common were not sufficient to counteract the features in those signs that are different and therefore to weaken the visual dissimilarity. The Opposition Division had found that the signs at issue were conceptually ‘similar’ to the extent that they include the figure of a person holding a polo mallet, but that there were also differences inasmuch as the earlier marks referred to a ‘traditional polo’ game, while the mark applied for referred to the game of ‘bicycle polo’.

30 In that regard, it must, first of all, be pointed out that there is necessarily a conceptual similarity between the signs at issue inasmuch as they both contain the representation of a polo player. That similarity was taken into account by the Opposition Division and by the Board of Appeal. It is true that both signs are also different inasmuch as, in one of them, the sport or game of polo is being played on a horse whereas, in the other, it is being played on a bicycle. However, no evidence has been put before the Court to suggest that bicycle polo is a sport or game that is sufficiently known to the relevant public - which the Board of Appeal correctly found to consist of average, reasonably well-informed and reasonably observant and circumspect consumers in the European Union and Austria - for the graphic representation in question to have a clear and specific meaning so that that public will be capable of grasping it immediately. In that regard, it must be pointed out that, in the intervener’s own words, the graphic representation in the mark applied for refers to an ‘emergent energetic urban sport … set in the tennis courts and school yards’. The graphic representation of that ‘emergent’ sport is not therefore capable of having a sufficiently clear and specific conceptual meaning for the relevant public. Consequently, in the light of those considerations, it must be held that those signs have a certain degree of conceptual similarity which may be categorised, at least, as low. In addition, it must be pointed out, in that regard, that neither the Board of Appeal nor the Opposition Division found that the signs at issue were conceptually dissimilar. On the contrary, the Board of Appeal found, in paragraph 33 of the contested decision, that the conceptual similarities between the signs at issue were not sufficient to counteract the conceptual features in those signs that are different and therefore ‘to weaken the visual dissimilarity’. Even though the wording in the contested decision is ambiguous in that regard, the Board of Appeal necessarily took the view that the signs at issue were conceptually similar, at least to a certain degree. Furthermore, the Opposition Division had found in its decision, to which the Board of Appeal refers, that there was a ‘certain conceptual similarity’ between the signs at issue.

31 Lastly, it must be borne in mind that conceptual differences may, to a large degree, counteract phonetic and visual similarities between the marks at issue, provided that at least one of those marks has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately (see, to that effect, Case C-16/06 P Les Éditions Albert René v OHIM [2008] ECR I-10053, paragraph 98, and judgment of 11 November 2009 in Case T-277/08 Bayer Healthcare v OHIM - Uriach-Aquilea OTC (CITRACAL), not published in the ECR, paragraph 53). For the reasons which have just been set out in the preceding paragraph, that is not the case here since the graphic representation at issue in the mark applied for represents, in the applicant’s own words, an ‘emergent’ sport. Consequently, in addition to the fact that any conceptual differences between the signs at issue are not clear enough to counteract the conceptual similarities between those signs, they are not capable of counteracting the visual similarities that have already been found to exist (see paragraphs 25 to 27 above).

32 In view of all of those considerations, having regard inter alia to the visual and conceptual similarities between the signs at issue, the Board of Appeal erred in finding that those signs were dissimilar overall. It must be held, on the contrary, that the signs at issue have a certain degree of similarity which may be categorised, at least, as low.

33 It is apparent from the contested decision that it was on the basis of the overall dissimilarity of the signs at issue that the Board of Appeal found that there was no likelihood of confusion. That finding of the Board of Appeal was therefore based on an incorrect assessment of one of the factors to be taken into account.

34 Under those circumstances, the first plea must be upheld and, on that basis and in accordance with the form of order sought by the applicant, the contested decision must be annulled.

The second plea, alleging infringement of Article 8(5) of Regulation No 207/2009

35 The applicant states that the Board of Appeal carried out, as regards the examination of the alleged infringement of Article 8(5) of Regulation No 207/2009, the same analysis as that carried out in connection with Article 8(1)(b) of Regulation No 207/2009 as regards the similarity of the signs at issue. It submits that, for the same reasons as those set out in connection with the first plea, the Board of Appeal erred in that regard. Furthermore, the applicant points out the similarities between the signs at issue and states that the intervener is parodying the earlier marks by means of the mark applied for. According to the applicant, the Board of Appeal ought to have taken those factors into account.

36 OHIM maintains that, when the condition of similarity is not satisfied under Article 8(1)(b) of Regulation No 207/2009, it must also be held, on the basis of the same analysis, that that condition is not satisfied under Article 8(5) of Regulation No 207/2009 either. Consequently, the Board of Appeal was fully entitled to refrain from applying Article 8(5) of Regulation No 207/2009 on the basis of the absence of overall similarity of the signs in question, as resulting from the examination of those signs under Article 8(1)(b) of Regulation No 207/2009.

37 The intervener states that the wording of Article 8(5) of Regulation No 207/2009 requires the signs at issue to be similar. It submits that, inasmuch as the signs at issue have been found to be dissimilar, the plea put forward by the applicant must be rejected. The possible reputation of the earlier marks would not alter that conclusion. Furthermore, the intervener points out that Article 8(5) of Regulation No 207/2009 does not apply in cases in which the goods concerned are identical or similar. That is the case here. Lastly, the intervener disputes that the other conditions for the application of Article 8(5) of Regulation No 207/2009 are satisfied in the present case. It also disputes that the mark applied for is a parody of the earlier marks.

38 In that regard, it must be borne in mind that, under Article 8(5) of Regulation No 207/2009, ‘upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2 [of the same article], the trade mark applied for shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.’

39 In the present case, it is apparent from the contested decision that the Board of Appeal rejected the opposition brought on the basis of Article 8(5) of Regulation No 207/2009 on the sole ground that the signs at issue were not, at least, similar. In particular, the Board of Appeal found in paragraph 44 of the contested decision that the ‘first’ of the three cumulative conditions for the application of Article 8(5) of Regulation No 207/2009 was not satisfied, that first condition having been defined by the Board of Appeal as relating to the determination of ‘whether the contested mark is identical to those earlier marks claimed by the opponent or is similar to them’. Since the Board of Appeal’s finding was based exclusively on an absence of similarity between the signs at issue and the contested decision must be annulled on that point (the first plea), the arguments put forward by the applicant in the context of the second plea, alleging infringement of Article 8(5) of Regulation No 207/2009, must be upheld. The contested decision must therefore also be annulled on that ground.

40 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Where there are several unsuccessful parties the Court is to decide how the costs are to be shared.

41 As OHIM has been unsuccessful, inasmuch as the contested decision is annulled, and the applicant has sought an order for costs against it, OHIM must be ordered to bear its own costs and to pay those incurred by the applicant.

1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 1 March 2013 (Case R 15/2012-2);

2. Orders OHIM to bear its own costs and to pay the costs incurred by The Polo/Lauren Company, LP;

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Polo/Lauren v OHMI - FreshSide (Représentation d'un garçon sur un vélo tenant un maillet) (Judgment) [2014] EUECJ T-265/13 (18 September URL: http://www.bailii.org/eu/cases/EUECJ/2014/T26513.html Cite as: ECLI:EU:T:2014:779, EU:T:2014:779, [2014] EUECJ T-265/13

Court of Justice of the European Communities (including Court of First Instance Decisions)