By Tikwiza Nkowane|www.amdlawgroup.com A federally protected trademark can be retained indefinitely if maintained in accordance with the laws. After going through the effort of obtaining federal protection of a Trademark,...
Originally posted 2014-12-16 11:00:06.
By Bryan Salvadore | amdlawgroup.com
The fashion brand, Ralph Lauren, well-known for its “Polo Player” logo recently won a trademark battle against FreshSide. Back In late 2009, FreshSide Ltd. applied to register a trademark with OHIM, the EU body responsible for Community Trademark registrations. FreshSide, which does business as “Chuck” applied to register a mark consisting of a polo player on a bicycle.
Ralph Lauren swiftly filed an opposition to FreshSide’s application for the Polo Player on a bicycle mark citing its own polo player on a horse mark. The company argued that allowance of FreshSide’s registration would infringe Ralph Lauren’s trademark rights. They based their argument on Article 8(1)(b) and Article 8(5) of the Community Trade Mark Regulations.
These articles explain that Ralph Lauren must demonstrate that FreshSide’s potential trademark is identical or similar to its own existing mark, its own mark has a reputation in the relevant territory, and for those reasons that there is a likely chance of confusion on the part of the public.
The Opposition Division was not convinced by Ralph Lauren’s argument and rejected its opposition to FreshSide’s registration in October of 2011. Then in March of 2013, the “Polo Player” brand owner attempted to appeal the court’s decision, but once again their attempt was in vain and their notice of appeal was dismissed. The court noted that the two marks were not similar and as a result it was unlikely that they would be confused by the public.
The ever persistent Ralph Lauren then took the Board of Appeals decision to General Court to have it annulled. The General Court recently found for Ralph Lauren, noting that shoppers usually view marks in their entirety. Bearing that in mind, the Court found that the marks at issues were similar and would likely be confused. Therefore, after years of litigation Ralph Lauren’s legal team has proven that persistence can result in victory.