The Polo Club that is not a Polo Club

Trademarks

Written by Leon Olde Nordkamp

Names of sports clubs are very often not the most original names. Obviously, there are exceptions like TOP Oss (Tot Ons Plezier (which means For Our Fun)) and HBOK uit Zunderdorp (Het Begon Op Klompen (which means It Started On Clogs), even including a football clog in the logo). Sadly, most sports clubs have less original and more descriptive names. Many towns and villages in the Netherlands have a FC or TC, with a reference to the location. You might think that you can't derive many rights from this. However, according to recent trademark case law, the European Court decided that in some cases you can derive rights from generic names of (sports) clubs.

In 1982, the brand Beverly Hills Polo Club was founded. This polo club is not a polo club but a clothing brand. It has two other trademarks in the European Union: the word mark BEVERLY HILLS POLO CLUB and a logo:

These trademarks are registered for various goods, including clothing, bags and jewels. Greenwich Polo Club, another party from the United States and a real polo club, also wanted to access the European market and applied for a trademark for nearly the same goods and for its own logo:

The clothing and lifestyle brand Beverly Hills did not agree and objected to the trademark application by Greenwich Polo Club. This marked the start of long legal proceedings which were only settled after four years.

Greenwich of Beverly Hills

Both in first instance and in appeal, the European authorities decided that there was a risk of confusion based on visual, phonetic and conceptual similarities. In appeal, the authorities also established that the identical term 'POLO CLUB' weighed more heavily than the differences that existed between the signs. The differences between Greenwich and Beverly Hills and both logos were therefore not sufficiently distinguishing compared with the identical element POLO CLUB.

Unpleasant surprise in Greenwich

Because the Greenwich-based polo club also wanted to sell clothing with its name and logo, it appealed again against this decision. Unfortunately, Greenwich Polo Club was in for an unpleasant surprise because the European Court of Justice agreed with the judgement of the European trademark authorities.

The European Court of Justice stated that it was usual for sports clubs to use place names to distinguish themselves from each other and to indicate where they are based. However, these place names did not have much or only a very slight influence over the conceptual content of the conflicting signs, because they still referred to the same concept, namely playing polo in a club.

Because the term Polo Club did not refer to the requested goods, such as clothing, jewellery, etc., the authorities judged that this term was distinguishing for these goods. Because Polo Club was present in both brands, there was a certain degree of similarity.

It had not been proven that the knowledge of polo among the general public could be compared with that of football

European Court of Justice -

Geographical location

Greenwich Polo Club had even referred to the importance of geographical location in the names of football clubs, for example, but that didn't help them either. The argument of the European Court of Justice was that it had not been proven that the knowledge of polo among the general public could be compared with that of football. Nor had they explained how the two polo clubs in the case could be compared with football teams in the eyes of the public.

Unfortunately, this mainly seemed to be the result of the argumentation of Greenwich Polo Club. A quick look in the register reveals that the trademark registration LIVERPOOL FOOTBALL CLUB can exist alongside LOS ANGELES FOOTBALL CLUB. We would love to know why a Football Club is so different from a Polo Club. In other words: in this case, why is the knowledge of the general public different than with football? Another important question is where the boundary lies. Is Waterpolo Club also specific enough to be distinguishing? Or do we draw the line at basketball, a considerably bigger sport in the European Union than polo?

Polo Club remains Polo Club

Greenwich Polo Club will need to come up with something different to use their name as a trademark in the European Union. Until then, the Polo Club which is not a Polo Club is a Polo Club according to the European trademark register!

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