Gerecht EU 18 mei 2011, zaak T-376/09(Glenton España, SA tegen OHIM-The Polo/Lauren Company)
Silhouet van polospeler
Gerecht EU 18 mei 2011, zaak T-376/09(Glenton España, SA tegen OHIM-The Polo/Lauren Company)
Merkenrecht. In de oppositieprocedure gaat ouder gemeenschapsbeeldmerk van pol lauren silhouet van polo-speler de strijd aan met de gemeenschapsbeeldmerkaanvrage van POLO SANTA MARIA. Relatieve weigeringsgrond. Mogelijk verwarringsgevaar: "correctly, that the earlier mark has enhanced distinctiveness in relation to the goods concerned by the present action (r.o. 55)". Oppositie toegewezen voor kleding, afgewezen voor zwepen en zadels.
35 Fifthly, the Board of Appeal emphasised, in paragraph 28 of the contested decision, the distinctive character of the ‘image of the polo player’ for the goods concerned by the present action. That figurative element is the sole component of the earlier mark and is one of the elements which go to make up the mark applied for. In that regard, it must be held that the distinctiveness of the sole figurative element constituting the earlier mark, which is similar to one of the figurative elements of the mark applied for, is relevant to the assessment of the visual similarity of the signs at issue (see, to that effect, Golden Eagle and Golden Eagle Deluxe, paragraph 34 above, paragraph 61). In the present case, Glenton España does not dispute the evidence which Polo/Lauren produced before OHIM in order to establish the distinctive character of the earlier mark for the goods in Class 25. In that regard, therefore, the finding made by the Board of Appeal cannot be disputed. As regards the other goods – in Class 18 – concerned by the present action, and contrary to the unsubstantiated assertions made by Glenton España, there is nothing to suggest that they are directly linked to polo playing. In that context, the distinctiveness of the representation of a polo player is, in relation to the Class 18 goods concerned by the present action, intrinsically enhanced because, in relation to those goods, the representation of a polo player has an imaginative content.
55 Fourthly, the Board of Appeal found, correctly, that the earlier mark has enhanced distinctiveness in relation to the goods concerned by the present action (see paragraph 35 above). The point, raised by Glenton España, that other Community marks containing a figurative element similar to that of the earlier mark have been registered does not affect that finding. As is clear from the evidence in the file, that argument was not presented, to that effect, during the proceedings before OHIM. Glenton España has mentioned the existence of those Community marks in order to support its argument that there was no likelihood of confusion. Glenton España did not, however, argue before OHIM that, owing to the existence of those earlier Community marks, the earlier mark did not have enhanced distinctiveness. Accordingly, the Court cannot review the legality of the decision in that regard. Moreover, Glenton España has not submitted any evidence showing that those Community marks did in fact coexist. In addition, it should be borne in mind, first, that it was demonstrated before OHIM that the earlier mark has a distinctive character in relation to the goods in Class 25, owing to the relevant public’s familiarity with it – evidence which was not challenged by Glenton España – and, secondly, that the representation of a polo player inherently has enhanced distinctiveness in relation to the goods covered by the present action.
59 In the light of all of those considerations, and taking into account the visual and conceptual similarities between the signs at issue, the identical nature of the goods covered by the present action and the enhanced distinctiveness of the earlier mark, it must be held that the Board of Appeal was correct in finding that, between the marks in question and in relation to the goods concerned, there was a likelihood of confusion on the part of the relevant public for the purposes of Article 8(1)(b) of Regulation No 207/2009.35 (...) In that context, the distinctiveness of the representation of a polo player is, in relation to the Class 18 goods concerned by the present action, intrinsically enhanced because, in relation to those goods, the representation of a polo player has an imaginative content.
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