Hip, hip, hooray

10th Jan 2023

O/832/22, Hipwood Polo v Beverly Hills Polo Club, UK IPO, 27th September 2022.

A family polo business has cause to celebrate, reports Luke Franks.

Key points

A comparison of the two marks found there to be a low to medium degree of similarity
The main similarity found in the goods was broken down into technical polo-wear and non‑technical polo-wear (casual clothing)
The evidence filed by the Opponent was insufficient and too generalised to support that the earlier mark had inherent distinctiveness through use.

The world of Polo has throughout its history spawned a fashion culture, through which companies that design and produce polo sportswear branch out into highly fashionable casual wear to be worn by the average person.

One of the latest trade mark skirmishes between companies involved in this sector concerns Lifestyle Equities CV, proprietor of the Beverly Hills Polo Club brand, which opposed registration of the Hipwood Polo brand, as used by a famous British polo‑playing family.

A brief history

On 3rd February 2021, Nicola Blakely filed a UK trade mark application for the Hipwood family’s figurative mark, which features on their polo equipment, including items such as saddle cloths.

The classes covered by the trade mark application included 9, 16, 18, 21, 25, 28, 35 and 41, with such goods specified as polo helmets, technical polo‑wear, polo mallets and polo saddles.

Following the publication of the trade mark application on 30th April 2021, Lifestyles Equities CV filed an opposition based on three grounds:

Section 5(2)(b) of the Trade Marks Act 1994 (TMA) – a trade mark shall not be registered if, because it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier mark.
Section 5(3) TMA – a trade mark that is identical with or similar to an earlier trade mark shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the UK and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark; and
Section 5(4)(a) TMA – a trade mark shall not be registered if, or to the extent that, its use in the UK is liable to be prevented by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade where the rights to the unregistered trade mark or other sign were acquired prior to the date of application for registration of the trade mark or date of the priority claimed for that application.

Sections 5(2)(b) and 5(3) relied on the earlier mark UK00915737653, which covered among other things clothing, polo‑shirts, belts and footwear. Under s5(4)(a) the Opponent claimed its earlier mark had been in use in the UK since 1982.

UK IPO decision

The Hearing Officer (HO) found that the Applicant’s class 25 goods, polo technical‑wear, were identical to the Opponent’s goods of “clothing”.

It was also found highly similar to the Opponent’s casual clothing because both have a similarity in physical nature, purpose (to clothe the body) and methods of use.

The Registry also commented that it would consider non‑technical polo‑wear also to be covered by the Opponent’s goods of “clothing”.

The finding that “polo technical‑wear” was covered by the Opponent’s clothing led to the conclusion that class 28 goods “polo balls” and “polo mallets” had a low degree of similarity; class 28 “protective knee pads” were of a medium to high similarity; and class 9 “polo helmets” were of a medium to high similarity to the Opponent’s “clothing”.

On comparing the marks the Registry found that the element of a polo player on horseback and the second element – the words BEVERLY HILLS POLO CLUB – contributed roughly equally to the overall impression of the Opponent’s mark.

The Registry found that the elements of a polo player on horseback and the element of the words “Hipwood Polo” contributed roughly equally to the overall impression of the Applicant’s mark.

The comparison of marks keenly pivoted around the conceptual similarity between them.

The Opponent’s mark was viewed to invoke the idea of a polo club in the famous Beverly Hills area of Los Angeles, California, whereas “Hipwood” in the Applicant’s mark would be perceived firstly as a surname.

The Registry considered that Hipwood Polo would therefore either be perceived as a polo business owned or run by a family or individual with the surname Hipwood or as a polo business or club located in a place called Hipwood.

The Registry did not identify Hipwood as being a place and in any case it did not consider Hipwood Polo would be perceived as a polo club located in Beverly Hills, California.

Overall, there was no aural similarity, a medium degree of visual similarity and a low degree of conceptual similarity found between the two marks.

The Registry considered the distinctive character of the Opponent’s mark as a prelude to determining the likelihood of confusion.

Regarding distinctive character, the Opponent’s earlier mark was found to have no inherent distinctiveness in relation to technical polo‑wear.

The device element, a polo player on horseback, invokes the idea of the sport of polo, and the word element was found to have an average level of distinctiveness as it extended to a particular polo club.

However, in relation to casual wear the earlier mark was found to have an above‑average degree of distinction, since casual clothing is not intended to be worn in polo games.

In addition, the Opponent filed substantial evidence, including EU and UK sales figures from 2006 to 2021 showing consistent sales in clothing year‑on‑year.

The evidence was acknowledged to be general and non‑specific in nature, which meant the evidence did not support the claim that there was inherent distinctiveness for the earlier mark in technical polo‑wear through use.

In the determining likelihood of confusion the Registry applied the usual interdependency principle whereby a lesser degree of similarity between the goods and services may be offset by a greater similarity between the marks and vice versa.

It applied the principle that the more distinctive the earlier mark, the greater the likelihood of confusion, and factored in imperfect recollection to find that there was no likelihood of confusion between the marks for any of the goods or services.

The Registry did not consider that the average consumer would perceive the similarities between the marks as meaning the goods and services came from the same undertaking, because:

(i) the common element Polo was not “so strikingly distinctive” for any of the relevant goods and services which directly relate to the game of polo;

(ii) the later mark did not simply add a nondistinctive element of the earlier mark; and

(iii) a changeover from the place name Beverly Hills to the place name/surname Hipwood appeared to be far from entirely logical and consistent with a brand extension of the earlier mark.

Therefore, the grounds under s5(2)(b) failed. The opposition under s5(3) failed as no link could be found to argue the two marks would be mistaken for one another by the average consumer.

The opposition under s5(4)(a) failed upon the same reasoning as s5(2)(b).

Coverage needed

A key takeaway from this case is to ensure that the evidence filed to support that a client’s earlier mark is inherently distinctive specifically covers all the goods and services.

The Opponent in this case failed to file evidence that supported the idea that technical polo‑wear had an inherent distinctiveness through use of the earlier mark.

Most of the evidence filed was too generalised towards the Opponent’s use of the earlier mark on clothing in general.

This functioned as a disadvantage because the Applicant’s mark covered technical polo‑wear more than casual clothing.

Nevertheless, the position ultimately failed because the Registry did not consider that there was any likelihood of confusion on the basis of the actual marks.

As an interesting additional point, the costs awarded were: £300 in regards to preparing a counterstatement and “considering other side distinctive case”; £800 in relation to finding and concealing evidence; £400 in relation to written submissions.