Is The Cfi Merely Horsing Around?

brings (slightly delayed) tidings of a foreign Court of First Instance decision.

The Royal Berkshire Polo Club applied to register a Community merchandise grade inwards the shape of a discussion together with device grade consisting of a flick of a polo player, mallet aloft, together alongside the words ROYAL COUNTY OF BERKSHIRE POLO CLUB for diverse goods, including cosmetic together with products for cleaning the torso inwards Class 3, equally good equally products used for domestic cleaning (e.g. bleach) inwards the same class. Polo/Ralph Lauren opposed the application, based on its national registrations of diverse discussion together with device marks, including 1 containing a flick of a polo player, mallet aloft, together with the words POLP RALPH LAUREN together with the discussion grade POLO. The OHIM Opposition Division rejected PRL’s opposition, but the Board of Appeal overturned that decision, allowing the opposition on likelihood of confusion grounds for the cosmetics together with products for cleaning the body, but non for the products for domestic cleaning. The lodge appealed, tilt inter alia that the Board had paid likewise lilliputian attending to the discussion chemical element of its grade when comparison the marks, together with that the Board’s conclusion granted PRL an unfair together with unjustifiable monopoly over the figurative chemical element of a polo-playing horseman.

The club’s appeal was unsuccessful, but the Board’s conclusion was partially annulled, allowing the opposition for the domestic cleaning products equally good equally for the cosmetics together with body-cleaning products.

Arguments were raised together with rejected concerning a failure of the Board to give sufficient reasons, but it’s the noun merchandise grade police rulings that the IPKat finds difficult to swallow. He draws his readers’ attending to two paragraphs inwards particular:

“Next, it must hold out recalled that a complex merchandise grade cannot hold out regarded equally beingness similar to only about other merchandise grade which is identical or similar to 1 of the components of the complex grade unless that element forms the dominant chemical element inside the overall impression created past times the complex mark. That is the illustration where that element is probable to dominate, past times itself, the icon of that grade which the relevant world keeps inwards mind, alongside the outcome that all the other components of the grade are negligible inside the overall impression created past times it…” [para.38]

says that this is reintroducing praegertheorie for discussion together with device marks, which volition alone recognise composite marks equally beingness similar where the shared chemical element dominates the mark, fifty-fifty though the theory was rejected for composite marks inwards Medion.

“Thirdly, the Court considers that the declaration that, were it non to hold out annulled, the Board of Appeal’s conclusion would induce got the outcome of according the intervener an unfair together with unjustifiable monopoly over the polo actor device, together with would enable it to foreclose whatever after application containing a similar logo cannot hold out accepted. … inwards relation to those products [the Class three goods], the device of a polo actor is an icon alongside high imaginative content. Such a device must hold out regarded equally arbitrary for the goods inwards enquiry together with deserves to hold out protected against subsequent applications depicting confusingly similar devices. Indeed, the wages of the legal authorities of the Community merchandise grade lies just inwards the fact that it enables holders of an before merchandise grade to oppose the registration of after marks which select unfair wages of the distinctiveness or repute of the before merchandise mark. Hence, far from according an unfair together with unjustifiable monopoly to the proprietors of an before mark, that authorities enables those proprietors to protect together with exploit the substantial investment made to promote their before mark.” [para.43]

As far equally the IPKat was aware, the regulation that drives European merchandise grade police is that what we’re trying to foreclose is after exercise that harms the functions (particularly the essential function) of the before merchandise mark. Mark-owners who seek to enforce those rights exterior of those limits are acting exterior of their legitimate interests. (Granted, this theory doesn’t friction match inwards easily alongside the Art.8(5) protection against unfair advantage, but this was an Art.8(1)(b) case). Here however, the emphasis has shifted. The CFI seat the involvement protected past times merchandise grade police non equally the portion served past times the merchandise mark, but instead equally the protection of the investment that the possessor has made inwards promoting his mark. Moreover, the primal protection offered to the grade seems, according to the CFI, to hold out protection against misappropriation of that investment, rather than against impairment to the mark.

Incidentally, the Kat is interested to encounter the exercise of the term ‘arbitrary’ used to depict the human relationship betwixt the grade together with the goods. This is a U.S. term, used to depict existent (i.e. non-made up) words which induce got no human relationship alongside the goods inwards enquiry together with is the second-highest shape of distinctiveness inwards the distinctiveness hierarchy (the get-go beingness coined terms).