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  • Writer's pictureRosie Burbidge

Are consumers confused by polo marks?


The owner of the Beverly Hills Polo Club brand has lost a trade mark infringement case against Royal County of Berkshire Polo Club in a High Court judgment concerning the UK, EU, Chile, Panama, Peru, Mexico and the UAE (Lifestyle Equities CV & Anor v Royal County of Berkshire Polo Club Ltd & Ors).


Both parties have co-existence agreements with Ralph Lauren, owner of the Polo Ralph Lauren brand, which permit their current branding (pictured).

The main question for the judge, Mr Justice Mellor, was whether there is a likelihood of confusion between the Beverly Hills mark and the Royal County of Berkshire signs. He noted that the case “does raise in a stark form the scope of protection which is or should be afforded to a registered trade mark which is used in a crowded market i.e. a market in which there are several trade marks using similar motifs and which incorporate the same or similar words”. This could only be answered by reviewing the CJEU case law.


“Evidence” of reputation and confusion

The judge identified a number of problems with the claimants’ “evidence” (which he put in inverted commas). These included marginal annotations in a key witness statement, some of which were described as “either inaccurate or positively misleading”, and misleading evidence about sales figures. The judge considered that one of Beverly Hills’ witnesses was “programmed to talk up the brand, even to exaggerate its performance”.


Mellor J therefore concluded that the Beverly Hills Polo Club brand only had a reputation for certain specific goods in some market and was not a “successful global brand”.


Having heard evidence from a vice-president of the defendant’s licensing agent in South America, the judge further concluded that “there is no confusion between these ‘polo-themed’ brands in South America and that consumers have learnt that the presence of a horse and rider motif is generic for such brands such that they must rely on other aspects of the branding and in particular the name as indicating origin”.


Finally, he was unimpressed by various examples of alleged confusion, stating: “if there really was confusion occurring between these brands by purchasing consumers, I would have expected a much more substantial body of incidents to have been reported and recorded.”


Infringement findings

Stepping back from the detail in the various jurisdictions, the judge said he had to adopt the perspective of the average consumer, who has an imperfect recollection of the Beverly Hills mark and encounters the Royal County of Berkshire sign on the goods in question, but does not have the opportunity to make a side-by-side comparison.


He rejected the case on indirect infringement, saying the crowded market and the elements in the mark and the sign “militate against anyone viewing the Sign as a sub-brand or as a brand refresh”.


Reviewing direct infringement in each jurisdiction, he found that there was no likelihood of confusion in any of them. Factors included the existence of side-by-side trading (in Panama) and the ability of consumers to distinguish between the brands (in the UK). As the proceedings were begun before the end of the Brexit transition period, the Court had the power to grant pan-EU relief.


In a detailed judgment, the judge rejected a Section 10(3) infringement claim as the average consumer would make no link between the brands, and found that a passing off claim failed. He also addressed joint and several liability and conspiracy to injure by unlawful means.


Beverly Hills attacked the validity of Royal County of Berkshire’s trade marks based on non-use. The latter conceded that two of their UK marks had not been put to genuine use and agreed that they should be revoked. Regarding two other marks, the judge said that although there were only sales on a small scale, this was clearly genuine use “aimed at maintaining or creating an outlet for the goods or a share in the market for the relevant goods” and use on printed matter was also genuine use.


What does this mean?

Not for the first time, a case concerning trade mark infringement has turned on evidence – or the lack of it – and how it is presented to the court.


In assessing the likelihood of confusion, judges are often swayed by the existence or absence of actual confusion. That, and the concerns around the evidence regarding the reputation of the Beverly Hills Polo Club brand and consumers’ perception of polo club brands in general, effectively decided this dispute.


The case therefore highlights the importance of compiling and assessing convincing evidence in trade mark cases and making sure it can withstand the court’s scrutiny. For more information on how we can help in this process, please get in touch with Rosie and her team.


To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com


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