Case T-214/04

The Royal County of Berkshire Polo Club Ltd

v

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

(Community trade mark – Figurative trade mark containing the verbal element ‘ROYAL COUNTY OF BERKSHIRE POLO CLUB’ – Opposition by the proprietor of the national figurative and word marks containing the verbal element ‘POLO’ – Refusal of registration by the Board of Appeal)

Summary of the Judgment

Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services

(Council Regulation No 40/94, Art. 8(1)(b))

There is, for United Kingdom consumers, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark between the figurative sign consisting of the device of a polo player and containing the verbal element ‘ROYAL COUNTY OF BERKSHIRE POLO CLUB’ the registration of which is sought for ‘bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices; aftershave, preparations for hair, shampoo, deodorants, eau de toilette, body sprays, bath oils, bubble bath, shower gel’ in Class 3 of the Nice Agreement, and the figurative mark consisting of a polo player device registered earlier in the United Kingdom for ‘bath salts, talcum powder, face powder, face cream, scalp stimulating preparations, lotions for use after shaving, all being non-medicated toilet preparations; and lipstick, brilliantine, hair lotions, shampoos, dentifrices, soaps and perfumes’ in the same class of that agreement, given the partial identity or similarity of the goods, the visual and conceptual similarities between the signs, the enhanced distinctiveness, both inherent and through use, of the polo player device in the earlier trade mark and the existence of a family of trade marks belonging to the earlier mark’s proprietor linked to the concept of polo for goods in Class 3.

(see paras 44, 52)