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“U.S. Polo Assn. v. Polo-Polo”

Council Regulation (EC) No. 40/94 of 20 December 1993 on the Community Trade Mark, Art. 8(1)(b) – United States Polo Association v. Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

  1. 1.

    Under Article 8(1)(b) of Regulation No. 40/94, upon opposition by the proprietor of an earlier mark, the mark applied for is not to be registered if there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. Such a likelihood of confusion includes the likelihood of association with the earlier mark.

  2. 2.

    The existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case.

  3. 3.

    The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.

  4. 4.

    It is quite possible that in a particular case an earlier mark used by a third party in a composite sign including the name of the company of the third party still has an independent distinctive role in the composite sign, without necessarily constituting the dominant element. In such a case, the overall impression produced by the composite sign may lead the public to believe that the goods or services in question come, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established.

  5. 5.

    In the context of consideration of the likelihood of confusion, assessment of the similarity between two marks means more than taking just one component of a composite mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite mark may not, in certain circumstances, be dominated by one or more of its components. Nevertheless, it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element.

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Decision of the European Court of Justice (Fifth Chamber) 6 September 2012 – Case No. C-327/11 P. “U.S. Polo Assn. v. Polo-Polo”. IIC 45, 105–106 (2014). https://doi.org/10.1007/s40319-013-0153-z

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