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A Polo Club in a Crowded Market

Updated: Nov 22, 2023

A recent decision of the UK High Court of Justice deals with the scope of protection to be given to a registered trademark used in a crowded market in which several marks use similar motifs which incorporate the same or similar words. Lifestyles Equities C.V. v. Royal County of Berkshire Pol Club Limited [2023] EWHC 1839 (UK Ch)


The Parties

The plaintiff is the owner of the following mark



The plaintiff’s brand was originally created in 1982 by two students. There was litigation with Ralph Lauren (R.L.) which culminated in a settlement agreement dated 20th February 1985 between the plaintiff and RL. There were limitations agreed to regarding use of the plaintiff’s trademark. The terms applied worldwide. These detailed provisions were evidently what RL required to agree to co-existence of the two brands. On this basis, two actions and various trade mark oppositions were settled. The settlement agreement was designed to distance the plaintiff’s brand and logo from the RL Polo brand and logo to avoid marketplace confusion.


The defendant owns the following mark


The defendant was founded in 1985. The Club is set in a 200 acre estate near Windsor in Berkshire and has world class sporting facilities including six polo fields, the world’s first all-weather polo arena, stabling for 175 horses and a highly regarded polo academy along with other sports activities. It is one of the premier polo clubs in the UK, ranked in the top 5. It hosts approximately 70 polo events each year including several prestigious international tournaments. It is well-known in the world of polo both in the UK and elsewhere.


The defendant has sold merchandised goods bearing some of the defendant’s logos since its inception, at first on a small scale in the UK only. In around 2005, sales expanded to other countries and thereafter on an increasing scale.


The Action

The plaintiff’s principal claim was that the defendant was infringing the plaintiff’s registered trademark, registered in the form shown above.

The plaintiff position was that:

  1. they and the defendants have co-existence agreements with RL, the owner of the well-known Polo Ralph Lauren brand (‘RL Polo’), in which RL imposed restrictions on their respective branding but which permitted their current branding;

  2. They accept that, of the ‘polo-themed’ clothing brands in the market, the RL Polo brand was No.1 and the US Polo Association was No.2;

  3. They assert that their brand is ranked No.3 in the market;

  4. They assert those three brands peacefully co-exist;

  5. Despite that, they assert there exists a likelihood of confusion between their mark and the defendant’s mark.

When the Judge completed his assessment of the competing marks, he emphasized these marks were composite marks, but no component dominates either of them. The horse and rider motif was not unique and co-exists with others. As such it did not retain an independent distinctive role in the plaintiff’s mark. For this and other reasons the action was dismissed.


The Judge was also influenced by the co-existence agreements with RL. They provided a useful and practical insight into the market for ‘polo’ brands and especially those which feature a polo horse and rider motif. RL’s logo comprises just its horse and rider motif. RL trusts that logo to act as the indicator of origin, particularly on garments, without any additional words. RL was and remains a well-established and well-resourced brand owner and can be taken to have an excellent understanding of its brands and the importance of protecting them. These attributes are reflected in the professional drafting of the co-existence agreements. The co-existence agreements also indicate that RL considers the combination of differences in the appearance of the horse and rider motif and the accompanying words sufficient to avoid consumer confusion.


The Canadian Position

The Trademarks Act directs that in determining whether trademarks or trade names are confusing, the court must have regard to all of the surrounding circumstances, including:

(a) the inherent distinctiveness of the trademarks or trade names and the extent to which they have become known;

(b) the length of time the trademarks or trade names have been in use;

(c) the nature of the goods, services, or business;

(d) the nature of the trade; and

(e) the degree of resemblance between the trademarks or trade names in appearance or sound or in the ideas suggested by them.


The first factor to be considered is the inherent distinctiveness of the trademarks in issue and the extent to which they have become known. The extent of the inherent distinctiveness of a mark will strongly influence the ambit of protection available to the mark. Where a trademark consists of words which are common and which are also contained in several other trademarks in use in the same market, it will be less distinctive and entitled to less protection than a strong mark. Based on this approach a similar result would likely be reached.


Comment

It is interesting that the Judge was so influenced by the existence of the co-existence agreements.



If you have questions, please contact me at mckeown@gsnh.com.


Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1600

Toronto, Ontario M5G 1V2

Direct Line: (416) 597-3371

Fax: (416) 597-3370


These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.


A version of this article originally appeared in the Law360 Canada published by LexisNexis Canada Inc.

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