Intensive use can overcome weak distinctiveness

This is another of a line of cases involving the POLO trade mark.

The applicant filed an EUTM application for HPC POLO covering class 18 (bags, etc) and class 25 (clothing). Ralph Lauren opposed it on the basis of its earlier EUTM for POLO, covering the same goods, relying on Article 8(1)(b) (likelihood of confusion) and Article 8(5) (a mark with a reputation and unfair advantage/detriment).

The EUIPO Opposition Division upheld the opposition on the basis of likelihood of confusion. On appeal, the Board of Appeal reached the same decision.

On further appeal, the General Court affirmed the findings of the Board of Appeal:

• The marks were similar to an average degree
• Because of its usage by Ralph Lauren, the POLO mark had enhanced distinctiveness
• Taking into account the identical goods, there was a likelihood of confusion

One of the applicant's arguments was that the word POLO had weak distinctive character because of that word referring in several EU languages to a type of clothing, namely polo shirts. The General Court was unimpressed, confirming that any inherent weak distinctiveness was fully offset by the enhanced distinctive character the POLO mark enjoyed as a result of the intensive use and promotion of it and the public's familiarity with the name.

This is not a surprising outcome. The applicant's argument would work if it was using the term "polo" in its descriptive sense, in other words it could not be prevented from selling "HPC polo shirts".

Case Ref: Case T-657/17