Action brought on 29 September 2011 - United States Polo Association v OHIM - Polo/Lauren (Representation of a device of two polo players)

(Case T-517/11)

Language in which the application was lodged: English

Parties

Applicant: United States Polo Association (Kentucky, USA) (represented by: P. Goldenbaum, I. Rohr and T. Melchert, lawyers)

Defendant: Office for Harmonisation in the Internal Market (Trade Marks and Designs)

Other party to the proceedings before the Board of Appeal: The Polo/Lauren Company, LP (New York, USA)

Form of order sought

Annul the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 17 June 2011 in case R 1107/2010-2;

Order the defendant to pay its own costs and those of the applicant; and

Order the other party before the Board of Appeal to pay its own costs, in case it intervenes in the proceedings

Pleas in law and main arguments

Applicant for a Community trade mark: The applicant

Community trade mark concerned: Community trade mark application of the figurative mark representing a device of two polo players, for goods in class 3 - Community trade mark registration No 5997473

Proprietor of the mark or sign cited in the opposition proceedings: The other party to the proceedings before the Board of Appeal

Mark or sign cited in opposition: French trade mark registration No 1441630 of the figurative mark representing a device of a polo player, for goods and services in classes 3, 9, 14, 16, 18, 24, 25 and 35; Spanish trade mark registration No 878316 of the figurative mark representing a device of a polo player, for goods in class 3; United Kingdom trade mark registration No 2172123 of the figurative mark representing a device of a polo player, for goods in class 3; German trade mark registration No 1070650 of the figurative mark representing a device of a polo player, for goods in class 3; Community trade mark registration No 4236527 of the three-dimensional trade mark representing a bottle device with a polo player, for goods in class 3

Decision of the Opposition Division: Upheld the opposition

Decision of the Board of Appeal: Dismissed the appeal

Pleas in law: Infringement of Rules 20(7) and 53(a) of Commission Regulation

No 2868/95, and Infringement of Article 80(1) of Council Regulation No 207/2009, as the Board of Appeal notified its decision to the parties of the opposition on 19 July 2011 without taking into account their joint request for a suspension of the proceedings filed on 18 July 2011 and then dismissed the applicant's request to revoke its decision and to grant the suspension request. Infringement of Article 8(1)(b) of Council Regulation No 207/2009, as the Board of Appeal wrongly found that the registration of the CTM application was precluded by Article 8(1)(b). There is no likelihood of confusion between the opposing marks.

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