A recent ruling by the Paris Court of Appeal illustrates how well-known trade marks can benefit from extended protection and oppose third-party trade marks, provided that they can demonstrate not only their reputation, but also the association that the relevant public will make with those trade marks and the dilution that this is likely to cause in their minds.
A French trade mark has been registered to cover a wide range of goods and services, including perfumes, cosmetics, sports equipment and equestrian accessories. THE POLO/LAUREN COMPANY, the proprietor of the earlier marks POLO (word mark) and Polo Player (figurative mark), filed an opposition on the grounds of damage to the reputation of its marks and the existence of a likelihood of confusion. The opposition was upheld by the INPI on the first ground.
The Court’s ruling – Damage to reputation confirmed
➡️ Brand recognition is widely accepted for many products (perfumes, wallets, bags, clothing), with the exception of ‘leather and imitation leather’.
➡️ The visual and conceptual similarities are significant. The word element GRANDPOLO leads the public to immediately perceive a polo player in the figurative element, rather than simply a horseman. The consumer will retain an imperfect image of this: the silhouette of a polo player on his horse. The term GRANDPOLO, which has no meaning of its own, reinforces the existing similarities and refers to polo as a sport.
➡️ The goods covered by the application for registration are identical or similar to those covered by the earlier trade marks, falling within the …
