In a recent judgment handed down in Case T-355/21, the General Court of the EU upheld the refusal of the figurative trademark “Polo Club Düsseldorf Est. 1976” for goods in Classes 18 and 25 on the grounds that it was incompatible with the earlier Spanish trademark “POLO CLUB” (fig) for the same goods. In the judgment, the General Court provides an interesting overview of the legal criteria for comparing trademarks, on the basis of which it upholds the EUIPO’s conclusion that the new trademark gave rise to a likelihood of confusion with the prior trademark among Spanish consumers.
In its appeal against the EUIPO’s decisions, the appellant argued, in essence, that there is no likelihood of confusion between the conflicting trademarks because, on the one hand, those trademarks have a low degree of overall similarity and, on the other hand, the earlier trademark POLO CLUB (fig) lacks distinctiveness or has only weak distinctiveness. The EUIPO found that the goods at issue were identical or very similar. The parties do not dispute this finding; therefore, the focus of the debate centers on the comparison of the trademarks from the perspective of the Spanish consumer.
Decision of the General Court
In response to the plaintiff’s arguments, the General Court notes that assessing the similarity between two trademarks involves more than simply taking a single component of a composite trademark and comparing it with another trademark. Rather, the comparison must be made by examining each of the marks at issue as a whole, which does not mean that the overall impression produced on the relevant public by a composite mark cannot, in certain circumstances, be dominated by one or more of its components.
In the present case, the terms “polo club” are both dominant and the most distinctive elements of each of the marks at issue. These words, “polo club,” are more distinctive than the figurative elements that make up the marks at issue. Furthermore, the only word elements of the earlier trademark are fully included in the trademark applied for, while the other word elements comprising it—namely, the words “Düsseldorf” and “est. 1976”—are considered secondary.
In conclusion, the Court of First Instance finds that the marks at issue exhibit, from a visual standpoint, at least a low degree of similarity; from a phonetic standpoint, at least a moderate degree of similarity; and from a conceptual standpoint, a high degree of similarity. In those circumstances, as the Board of Appeal correctly noted, the similarities between the marks at issue—in particular, from a phonetic and conceptual standpoint—cannot be offset by the existence of visual differences. For all those reasons, the Board of Appeal correctly found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of the EU Trade Mark Regulation.
Comment
From my perspective as a Spanish consumer, I believe that the Court’s conclusion—and, prior to that, the EUIPO’s—is correct. However, it would have been interesting to see the Court’s assessment had the relevant public been, for example, British consumers prior to Brexit.
On another note, this case illustrates the multitude of factors, circumstances, and even sensitivities that influence the conclusion regarding the possible existence of a likelihood of confusion between trademarks, and it may lead us to consider whether it would be possible for cases of this kind to be resolved exclusively using artificial intelligence-based tools in the not-too-distant future.
Author: José Ignacio San Martín
This article first appeared in WTR Daily, part of World Trademark Review, in June 2022. For more information, visit: www.worldtrademarkreview.com.