When it comes to the intersection of fashion and law, there are not many things more important than trademarks. And protecting those trademarks. At the moment, there are so few legal avenues available to designers that allow them to stop copycats. But there are pretty protective laws in place to protect a brand’s identifying mark. And why wouldn’t there be? Trademarks are, after all, how many of us identify and distinguish one brand from another. All of this is to say, we’re usually not surprised when a brand or designer browbeats and fights tooth and nail to protect trademarks. Ralph Lauren is just such a brand to swiftly and fiercely take action for its logos, as is perfectly illustrated by a recent – and victorious battle – in Europe.
Let’s start with some background: In 2009, FreshSide Ltd filed an application to register a trademark with the Office for Harmonisation in the Internal Market (OHIM), which is responsible for the registration of trademarks in the European Union. FreshSide, which does business as “Chunk,” applied to register a mark consisting of a polo player on a bicycle. (In case you’re wondering, bike polo is evidently an actual thing people do.)
In true Ralph Lauren fashion, the company quickly filed opposition to FreshSide’s polo player on a bike mark, citing its own trademarks with the polo player on a horse (both marks pictured below). In the opposition, Ralph Lauren relied on Article 8(1)(b) and Article 8(5) of the Community Trade Mark Regulation.
So, a little bit of European Union law, for the inquiring minds.
Article 8(1)(b) states: 1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered: (b) if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.
Essentially, Ralph Lauren is tasked with showing that its existing marks are the same as or similar to FreshSide’s potential trademark, that both marks relate to the same or similar goods, and that there would be a likelihood of confusion by the public.
And Article 8(5) stipulates: Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
This just means that Ralph Lauren’s marks need to have a reputation in the relevant territory, the marks have to be the same or similar, and it has to be shown that allowing FreshSide to use its polo player on a bike would be an unfair advantage or could be detrimental to RL’s distinctiveness.
In October of 2011, the Opposition Division rejected Ralph Lauren’s opposition. The brand filed a notice to appeal in December of 2011, which was dismissed by the Second Board of Appeal of OHIM in March of 2013. In its dismissal, the Second Board of Appeal noted that the marks at issue were not similar and thus there was not a likelihood of confusion.
This brings us to the most recent happenings. Ever the persistent brand, Ralph Lauren took the Board of Appeal decision to General Court to have it annulled. In finding for Ralph Lauren, the General Court first noted that the “two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects.”
The General Court also pointed out that the average consumer typically views a mark in its entirety, as opposed to singling out certain aspects. So, for example, the fact that one mark has a bike and the other a horse is not necessarily detrimental to Ralph Lauren’s case. In fact, the General Court said, no evidence was given to suggest that the relevant public was even aware that bike polo existed, and thus many might perceive a the polo player on a bike as a polo player on a horse.
Because the “signs at issue have a certain degree of similarity,” the General Court annulled the Board of Appeal’s finding in reference to Article 8(1)(b).
And lastly, the General Court annulled the decision related to Article 8(5), because the Board of Appeal rejected on the “sole ground that the signs at issue were not, at least, similar.”
Ralph Lauren has fought a years long battle against the United States Polo Association in order to protect its marks. It’s also pretty successful when it comes to fighting parody marks here in the U.S. The moral of the story: The legal team over there at Ralph Lauren does a pretty good job of protecting that polo player on the horse.
JENNIFER WILLIAMS is a law school graduate who writes about fashion, the legal avenues available for protecting it, and the ways in which the laws are falling short. She is admitted to practice law in the state of New York. For more from Jennifer, follow her on Twitter.