Battle of the Polo players in General Court (Part 2)

In Case T-265/13, the General Court examined another opposition brought on the basis of the famous polo player by Polo/Lauren.

Freshside Ltd- contested CTM

Earlier marks

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Classes 18, 25 and 28 

Classes 9, 18, 20, 21, 2 and 28



Both the OD and BoA rejected the opposition finding that the signs at issue were dissimilar overall and that there could therefore be no likelihood of confusion. Furthermore, since the signs at issue were not similar, one of the cumulative conditions for the application of Article 8(5) of CTMR was not satisfied.

The GC annulled the contested decision for the following reasons. It disagreed with the BoA’s reasoning that the graphic representation of a bicycle in the contested CTM constituted the dominant element of that mark.

In fact, 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. 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 cannot be regarded as negligible in the signs at issue.

It is correct 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.

 As regards the applicant’s argument that the game of “bicycle polo” would be an ‘emergent energetic urban sport … set in the tennis courts and school yards’, the Court held that the graphic representation of that ‘emergent’ sport is not capable of having a sufficiently clear and specific conceptual meaning for the relevant public.  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. Thus the signs must be found overall similar and the case is sent back to the Boards of appeal to make a new assessment on whether there is a likelihood of confusion.


Posted by: Laetitia Lagarde @ 17.45
Tags: General court, likelihood of confusion, polo players, bicycle polo,
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CHEESE FOR THOUGHT for the OHIM Cancellation Division.

The OHIM Cancellation Division has invalidated, in its entirety, the CTM CUORE DI FORMAGGIO GRANA ITALIANA (fig.) that had been registered for “cheese” in class 29 and for “cooking utensils and instruments, hand operated, cheese curlers, cheese graters”, in class 21.



The Consorzio per la tutela del formagggio Grana Padano filed a request for a declaration of invalidity against CTM No 9534281 for the figurative mark CUORE DI FORMAGGIO GRANA ITALIANA registered, as of 1 April 2011 for:

“cheese” in class 29; and

cooking utensils and instruments, hand operated, cheese curlers, cheese graters” in class 21.

The request for invalidity was filed on the basis of both absolute and relative grounds, in particular, the invalidation was requested:

- pursuant to Article 52 (1) (a) CTMR (in connection with the absolute ground for refusal under Article 7 (1)(k) CTMR) and

- pursuant to Article 53 (1) (a) CTMR (in connection with the relative grounds for refusal under Articles 8 (1) (b) and 8(5) CTMR),

and invoked the Consorzio’s prior collective CTMs GRANA (fig.) and GRANA PADANO (fig.) registered for “cheese” in class 29 (and in relation to which the Consorzio claimed a reputation in several EU countries) as well as on the Protected Designation of Origin (“PDO”) for GRANA PADANO cheese.



In its decision No 6444 C, the Cancellation Division fully upheld the invalidity request. In line with the Consorzio’s claims, the decision confirmed that the contested mark indeed constituted a misuse or evocation of the earlier PDO GRANA PADANO with reference to cheese products so that the mark should never have been registered for “cheese”, while with reference to the remaining goods in class 21, the Cancellation Division rightly concluded that the mark would take unfair advantage of the repute of the earlier GRANA PADANO mark if allowed to continue to be registered for these goods.

Posted by: Edith Van den Eede @ 17.26
Tags: cancellation division ohim, invalidity, absolute grounds, relative grounds, grana padano, grana, PGI, protected geographical indication, PDO, protected designation of origin,
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On 2 December 2013, the first OHIM Board of Appeal issued a decision confirming the Examiner’s previous decision to refuse the registration for VANA TALLINN AUTHENTIC ESTONIAN LIQUEUR (figurative) for “liqueurs, liqueur-based cocktails and mixed drinks” on the basis of the prior Protected Geographical Indication (“PGI”) ESTONIAN VODKA.


In December 2010, the Applicant filed an International Registration (“IR”) designating amongst others the EU, for the figurative mark VANA TALLINN AUTHENTIC ESTONIAN LIQUEUR for “liqueurs; liqueur-based cocktails and mixed drinks” in class 33.

The OHIM Examiner issued a provisional refusal an absolute ground for refusal under Article 7 (1) (j) CTM Regulation, as the application contained a significant part of the PGI ESTONIAN VODKA for vodka. To overcome the refusal, the Examiner suggested a limitation of the goods so as to only cover “liqueurs, liqueur-based cocktails and mixed drinks, but not including any spirit drinks other than those which comply with the conditions of the protected geographical indication ESTONIAN VODKA“.

Since the applicant disagreed with the limitation, the Examiner rejected the application, holding amongst others that:

- “OHIM is obliged to apply the CTMR provision in a way which is consistent with the specific EU regulations and international agreements governing PGIs and PDOs and, insofar as possible, to directly apply the relevant provisions of the specific PGI/PDO regulations taking into account the principle ‘lex specialis derogat legi generali’. These regulations prohibit the registration of trade marks which conflict with the PGIs/PDOs protected under the regulations in question”;

- “the fact that the element ‘ESTONIAN’ describes a particular country and geographical area and that it is therefore endowed with a greater identifying force than the second element, ‘VODKA’, which simply describes the nature of the goods. The sign applied for contains the indication ‘ESTONIAN LIQUEUR’ which is evocative of the PGI ‘ESTONIAN VODKA’. Moreover, the indications coincide in their first element and have a similar structure”;

- the goods covered by the application are to be considered comparable (in line with the ECJ “Cognac II” decision) to the spirit drink (vodka) registered under the PGI.

Decision in Appeal

The IR holder filed an appeal. In its reasoning, the Board’s decision agreed in toto with the prior Examiner’s decision, including where the products that were considered “comparable” were concerned. No further action was brought before the Court of Justice so that the decision has become final.

Posted by: Edith Van den Eede @ 11.02
Tags: BoA, PGI; protected geographical indication, comparable goods, estonian vodka, estonian liqueur,
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MARQUES on Twitter: now we are 3,000!

It is with great happiness that Class 46 can report that the MARQUES Twitter account has this morning notched up its 3,000th follower.

MARQUES has taken a highly responsible attitude towards maintaining a presence on Twitter, confining its contributions to only those matters that concern trade mark and design protection issues and news from the organisation.

We are all grateful to our followers for their support and will work hard to continue to earn and justify it.

You can access the MARQUES Twitter account here.  You can also join the moderated MARQUES LinkedIn Group here and check us out on Facebook here

Posted by: Jeremy Phillips @ 08.38
Tags: Twitter,
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Battle of the Polo players in General Court (Part 1)

In Cases T-90/13 The Polo/Lauren Company LP successfully opposed a CTM application on the basis of its earlier TM’s representing a polo player.

Contested CTM - Herdade de S. Tiago II — Sociedade Agrícola, SA (Portugal)

Earlier marks




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Classes 3, 18, 25, 28, 41 and 43 

 Classes 9, 18, 20, 21, 24 and 25


The Opposition Division partially upheld the opposition and rejected, on the basis of Article 8(1)(b) of Regulation No 207/2009, the CTM application in respect of the ‘games and playthings’ in Class 28 and all of the goods in Classes 18 and 25, with the exception of ‘whips, harness and saddlery’ in Class 18. It also rejected, on the basis of Article 8(5) of CTMR, the contested CTM in respect of the ‘soaps, perfumery, essential oils, cosmetics and hair lotions’ in Class 3, the ‘gymnastic and sporting articles not included in other classes’ in Class 28 and the ‘sporting activities, organisation of exhibitions for sporting purposes; sporting activities, including organisation of sports competitions’ in Class 41. By contrast, the opposition was rejected in respect of the other goods and services.

The second Board of Appeal of OHIM found, in essence, that the OD had not erred in finding that there was a likelihood of confusion between the signs at issue, within the meaning of Article 8(1)(b) and 8(5) of CTMR, in the light of the identity of the goods concerned and the similarities between the signs at issue and the enhanced distinctive character acquired through use of the earlier marks in respect of certain goods in Classes 18 and 25.

The General Court confirmed the findings of OHIM regarding the similarity of the goods and the signs. At the visual level, the signs at issue have the figurative representation of a polo player in common. In particular, the horse seems to be in motion and the polo player is holding a mallet in his hand. Although the figurative representations contain differences, those differences do not make it possible to come to the conclusion that there is no similarity between the figurative elements in the signs at issue. In all the cases, the relevant consumer will distinctly identify, and remember, a polo player (see, to that effect, judgment of 18 May 2011 in Case T‑376/09 Glenton España v OHIM — Polo/Lauren (POLO SANTA MARIA), paragraph 33).  Furthermore, although the letter ‘v’, which is used in the mark applied for, also plays a non-negligible role in that mark, in view of its position and size, it is not, however, the dominant element. Therefore the marks are visually similar to a medium degree and identical from a conceptual point of view. The GC dismissed the appeal.


Posted by: Laetitia Lagarde @ 17.41
Tags: General court, likelihodo of confusion, polo player, Polo/Lauren,
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Germany's Supreme court on the colour yellow

The German Federal Supreme Court (BGH) yesterday gave its ruling in an infringement case involving competing shades of yellow. The claimant, the German dictionary publisher Langenscheidt, sought to enjoin the respondent Rosetta Stone from using the colour yellow for its products and advertising. Since 2010, Rosetta Stone has been using yellow packaging and yellow dominated advertising for its language learning software. Striking back, Rosetta Stone filed a cancellation action against Langenscheidt's German trademark registration for the colour yellow. So far, Rosetta Stone has lost in all instances, both in the infringement and the cancellation proceedings, which are currently also pending before the German Federal Supreme Court (file no. I ZB 61/13, with an oral hearing scheduled for 23 October).

The BGH, confirming the decisions of the lower instances, held that Rosetta Stone is using the colour yellow as a trademark on packaging and in its advertising. While consumers typically view colours as mere design or ornamental features, the German market for dictionaries is strongly influenced by colour schemes. Consumers have therefore grown to recognize the predominant use of a colour as a denominator of origin. This usage also affects neighboring market segments, including language learning software as it is marketed by Rosetta Stone.

The BGH continued by maintaining that Langenscheidt's yellow colour, which it has been using since 1956, has acquired an average degree of distinctiveness through its intensive use. Rosetta Stone's yellow colour is a highly similar shade, leading to a danger of confusing the two. Confusion is not ruled out by the parties' differing word and device marks, either. The court held that under the particular circumstances in which the colours have been used, the relevant public recognizes them as individually distinctive signs. Hence, a comparison must be made between the two shades of yellow only, excluding any other marks the parties also use on their packaging and in their advertising.

Stay tuned for the publication of the BGH's full written reasoning in this interesting colour battle.

Case Reference: BGH, I ZR 228/12, decision of 18 September 2014.

The BGH's German language press release is available here.

The decision of the Higher Regional Court of Cologne in the previous appeal instance has been published in GRUR-RR 2013, 213 (decision of 9 November 2012, file no. 6 U 38/12).

Posted by: Anthonia Ghalamkarizadeh @ 10.41
Tags: BGH, OLG Köln, Langenscheidt, Rosetta Stone, yellow, gelb, Anthonia Ghalamkarizadeh,
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Meet the Bloggers Wed 24 Sept @ 6 pm, Tivoli Bar & Lounge, Tivoli Hotel, Copenhagen

Next week the 28th Annual Conference of MARQUES will take place in Copenhagen. As has become a tradition, the bloggers of the Class 46 blog would be delighted to meet their readers.

We have arranged for a meet-up at 6 pm on Wednesday, 24th September, at the Tivoli Bar & Lounge at the conference hotel. The buses for the evening's social event will depart at 7 pm from the same hotel, so this is the perfect opportunity for a pre-dinner drink and some networking.

We are looking forward to seeing many of you in Copenhagen!

Posted by: Mark Schweizer @ 18.31
Tags: Annual Conference, meet the bloggers,
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