Schoon & Fris

It is important, first, to point out that, by taking the figurative element as the dominant element of the trade mark sought, the Board of Appeal did not in the least ignore, in the comparison of the two signs from the visual point of view, the verbal element of that mark. In making that comparison the Board of Appeal expressly took into account the way in which the words were written. The Board of Appeal also correctly took the figurative element as the dominant element of the mark sought. It is certainly the polo player, that is to say the figurative element, which gives that mark its distinctiveness and which will be the most easily remembered by consumers. By contrast, the verbal element of the mark sought, consisting of six words written in relatively small characters which are, because of their position in the roundel, particularly difficult to read, is negligible in the overall impression produced by that mark. In addition, the presence of the verbal element in the form of a roundel only emphasises the figurative element of that mark, with the result that the latter’s dominance is strengthened.

Secondly, the applicant’s argument that the reference made, in the contested decision, to the arbitrary nature of the mark takes no account of the fact that it is a mark of origin, identifying those products as originating from The Royal County of Berkshire Polo Club. In that regard, it must be observed that the Board of Appeal had observed that the figurative element of the mark sought, taken as the dominant element of that mark, was arbitrary in relation to the goods for which that mark was sought. That observation is entirely correct, since it cannot be denied that the concept of the sport of polo deriving from the mark sought has no connection with the goods in Class 3 for which registration of the Community trade mark was applied for. It follows that the question whether the contested decision took account of the fact that it was a mark of origin is irrelevant to the resolution of this dispute.

Thirdly, the Court considers that the argument that, were it not to be annulled, the Board of Appeal’s decision would have the effect of according the intervener an unfair and unjustifiable monopoly over the polo player device, and would enable it to prevent any later application containing a similar logo cannot be accepted. It must be observed, in that regard, that the Board of Appeal was entirely correct in maintaining that the device of a polo player is intrinsically highly distinctive in relation to the Class 3 goods for which registration of the mark is sought and which are currently covered by the earlier UK registration because, in relation to those products, the device of a polo player is an image with high imaginative content. Such a device must be regarded as arbitrary for the goods in question and deserves to be protected against subsequent applications depicting confusingly similar devices. Indeed, the advantage of the legal regime of the Community trade mark lies precisely in the fact that it enables holders of an earlier trade mark to oppose the registration of later marks which take unfair advantage of the distinctiveness or repute of the earlier trade mark. Hence, far from according an unfair and unjustifiable monopoly to the proprietors of an earlier mark, that regime enables those proprietors to protect and exploit the substantial investment made to promote their earlier mark.

Finally, the applicant’s argument that the Board of Appeal substituted for the test of likelihood of confusion between the marks in question a test based on the assumed degree of similarity between the marks must also be rejected as unfounded. The existence of a likelihood of confusion between the marks in question was correctly established by the Board of Appeal, since it took into account, in its analysis, all the factors relevant to the circumstances of the case: the partial identity or similarity of the goods, the visual and conceptual similarities between the signs, the enhanced distinctiveness, both inherent and through use, of the polo player device in the intervener’s trade mark and the existence of a family of trade marks belonging to the intervener linked to the concept of polo for goods in Class 3.

By asking the Court, first, to alter the Board of Appeal’s decision in so far as it rejected the opposition concerning bleaching preparations and other substances for laundry use and polishing, scouring and abrasive preparations, and, secondly, to uphold the opposition for all the goods covered by the application for the Community trade mark, on the basis both of the earlier trade mark registered in the United Kingdom under No 657 864 and of the other earlier trade marks, the intervener is making use of the opportunity afforded to it by Article 134(3) of the Rules of Procedure to seek, in its response, a form of order altering the decision of the Board of Appeal on a point not raised in the application.

In such a case, the other parties may, under Article 135(3) of the Rules of Procedure, within a period of two months of service upon them of the response, submit a pleading confined to responding to the form of order sought for the first time in the intervener’s response. Neither OHIM nor the applicant made use of that opportunity. By contrast, at the hearing both the applicant and OHIM gave their views on the intervener’s application. In that context, the applicant invited the Court to reject that application as unfounded. OHIM addressed only the part of the application concerning the rejection by the Board of Appeal of the opposition in respect of bleaching preparations and other substances for laundry use, and polishing, scouring and abrasive preparations. It pointed out that it shared, in that regard, the intervener’s approach.

It must be noted, first of all, that, while it is true that most of the goods covered by the earlier figurative trade mark registered in the United Kingdom under No 657 864 are used solely as beauty or personal hygiene products, the same cannot be said for soaps, which have a dual function. Even if soaps are used to wash the body and give it an agreeable scent or aspect, it is none the less true that, as the Board of Appeal failed to point out in paragraph 22 of the contested decision, they are also used as housekeeping products. In that respect they are comparable to bleaching preparations and other substances for laundry use, as well as to cleaning, polishing, scouring and abrasive preparations. It follows that a similarity exists between, on the one hand, soaps covered by the earlier figurative mark registered in the United Kingdom under No 657 864, and, on the other hand, bleaching preparations and other substances for laundry use, and polishing, scouring and abrasive preparations, for which registration is applied for by the applicant. Taking account of that similarity, the likelihood of confusion found by the Board of Appeal extends also to bleaching preparations and other substances for laundry use and to polishing, scouring and abrasive preparations, with the result that the Board of Appeal’s decision must be annulled in part inasmuch as it did not refuse the application for registration of the Community trade mark for those goods. Under Article 63 of Regulation No 40/94, it is for OHIM to take the measures entailed by such partial annulment.

In so far as concerns the intervener’s application for the opposition to be upheld on the basis of its earlier trade marks other than that registered in the United Kingdom under No 657 864, it is appropriate to observe that such an application could, at the very most, lead to the same result as does the preceding paragraph, that is to say to the outright refusal of the application for the Community trade mark for the goods in Class 3.

The Court  annuls the contested decision in so far as it allows the registration for the benefit of The Royal County of Berkshire Polo Club Ltd of the trade mark application for the following goods in Class 3: bleaching preparations and other substances for laundry use, and polishing, scouring and abrasive preparations. Lees het arrest hier.