GENERAL COURT, JUDGEMENT OF 18 MAY 2011, GLENTON ESPAÑA, SA V. OHIM - THE POLO/LAUREN COMPANY, LP, T-376/09  

In a case that involved a highly distinctive earlier sign, the General Court held that a certain degree of visual similarity combined with a strong conceptual similarity between the device elements, of which the earlier mark exclusively consisted and which was prominently contained in the contested mark, is sufficient to give rise to a likelihood of confusion for identical or highly similar goods.

Glenton España, SA applied for the registration of the figurative Community trademark “Polo Santa Maria” for goods in classes 18 and 25.

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The Polo/Lauren Company, LP opposed the application, in particular, on the basis of its Benelux earlier figurative mark, registered for goods in classes 18 and 25. It invoked Articles 8(1)(b), 8(4) and 8(5) Community Trademark Regulation (CTMR).

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The Office for Harmonization in the Internal Market's (OHIM's) Opposition Division upheld the opposition based on likelihood of confusion (Article 8(1)(b) CTMR).

The Second Board of Appeal of OHIM upheld the appeal in part, namely in relation to "whips, harness and saddlery" in class 18. However, the Board rejected the appeal and upheld the opposition in relation to the remaining goods in class 18 and all goods in class 25. The Board considered that the goods were identical or highly similar, the signs had a certain degree of visual similarity and significant conceptual similarity and that the earlier mark had an enhanced distinctiveness in relation to goods in classes 18 and 25 (with the exception of "whips, harness and saddlery"). As a result, the Board concluded that there was a likelihood of confusion.  

Glenton appealed this decision to the General Court.  

The General Court held that there was some visual similarity and significant conceptual similarity between the signs based on the common polo player device and the concept of polo playing. The visual differences between the polo players were only minor, and the conceptual similarity was reinforced by the presence of the word “polo” and by the figurative elements of a horseshoe and two crossed polo mallets in the later sign.  

Importantly, the court acknowledged that the polo player device is the sole component of the earlier mark and that due to its central position and size maintained its independent distinctive role in the application as a whole. In this respect, the court confirmed that the earlier mark needs not be reproduced identically in the later mark (such as in the CJEU decision Thomson Life1), but that similarity between the signs can be established merely based on the similarity of the earlier mark with an element of the later mark which has an independent distinctive role.  

The court also acknowledged that the "image of the polo player" has an enhanced distinctive character for the goods in question. Furthermore, the court supported the view that in the clothing sector visual similarity between the signs (as opposed to phonetic similarity) will, as a general rule, be more important. Finally, the court rejected Glenton’s argument of coexistence with one of its other earlier marks containing a figurative element identical to that of the mark applied for as both irrelevant and unsubstantiated.

As a result, taking into account the visual and conceptual similarities between the signs, the identical nature of the goods at issue and the enhanced distinctiveness of the earlier mark, the General Court confirmed that there was a likelihood of confusion on the part of the relevant public and dismissed the action.