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Who wants to play a game of Polo: Style and Taste versus Ralph Lauren

Written by Fatima Amedu on 29 January 2019

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The EUIPO Fifth Board of Appeal has decided that Style & Taste’s declaration of invalidity it had filed in relation of one of the Ralph Lauren’s Polo figurative (image) marks (‘Polo EU trade mark’) did not contain sufficient evidence to support their claim.

Background facts

Ralph Lauren applied to register various goods under a Polo EU trade mark in classes 9 (scientific, audio, visual, telecommunication and computer equipment), 20 (furniture and furnishings), 24 (textiles and household linens) and 25 (clothing, footwear and headgear). Ralph Lauren successfully registered the mark in 2005 with the EUIPO.

In 2016, Style & Taste sought a declaration for invalidity of the Polo EU trade mark from the EUIPO’s Cancellation Division. Amongst its claim, Style & Taste alleged that Ralph Lauren’s mark was based on the earlier Spanish industrial Design Right (No Doo24 087).

In May 2018, the EUIPO Cancellation Division rejected Style & Taste’s application based on the following reasons:

1)      As Style & Taste had failed in providing a translation of the registered certificate for the earlier Spanish industrial design, it had not proved the validity and scope of the protection of the earlier right;

2)      By only referring to national law and not providing evidence based upon it, this could not be considered sufficient; and

3)      Style and Taste had failed to submit the relevant national legislation in force or provide a logical argument stating why it should succeed in preventing Ralph Lauren to use its EU trade mark.

Decision of the Fifth Board of Appeal   

In reaching its decision, the Fifth Board of Appeal had a review of article 60 (2) (d) of the European Union Trade Mark Regulation (‘EUTMR’) 2017/1001 regarding the EU Trade mark:

“2.   An EU trade mark shall also be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where the use of such trade mark may be prohibited pursuant to another earlier right under the Union legislation or national law governing its protection, and in particular:

(a)

a right to a name;

 

(b)

a right of personal portrayal;

 

(c)

a copyright;

 

(d)

an industrial property right.”[1]

The Court decided that since Style & Taste relied solely upon the right conferred by the Spanish Industrial Design Right (No Doo24 087) which had lapsed on 22 May 2017, their application had to be rejected. Style & Taste failed to provide a copy of the renewal request relating to the earlier right. In addition, Style and Taste had failed to discuss the status of the right they were relying upon. As a result, the only right that Style and Taste relied upon for their declaration was no longer existed. Consequently, the request for a declaration of invalidity could not be founded as there was no earlier right found within the meaning of the above article 60 (2) (d) EUTMR.

The above decision should be seen as one that emphasises that the burden on proof seems to reside with the individual trying to prove a claim. Thus, evidence is always key!



[1] https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX%3A32017R1001

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