When applying to register a trade mark a key issue is to ensure that the specification (which lists what will be protected by the registration) is correct. Does it cover the goods that you are planning to sell under the mark?

A problem can arise where the mark is descriptive of the goods.  For example, woolly for jumpers.  In this situation, the solution is to exclude from the specification those goods of which the mark is descriptive.

This was highlighted recently in a case concerning the Polo/Lauren Company (Polo) and its RUGBY brand.

Polo’s RUGBY range is their “campus, downtown preppy-style collection” and, although launched in the US in 2004, their first European RUGBY store only opened in Covent Garden in September.  

In June 2004 Polo applied to register  RUGBY as a Community Trade Mark for goods and services including, bags, clothing and retail services. The Community Trade Mark Office (OHIM) initially refused the application in relation the clothing but allowed it to proceed with the disclaimer that “none of the aforementioned goods relating to clothing used for playing rugby or being made in a style similar or identical to clothing use for playing rugby“.  The mark then proceeded to registration in September 2006.   On this basis Polo cannot stop third parties using “RUGBY” on clothes for Rugby.   

In January 2009 American Clothing, a competitor of Polo applied to have the registration cancelled on the basis that RUGBY was descriptive as it is commonly used as a term for clothing (that is rugby shirt) and that it was also deceptive as people would believe that Polo’s RUGBY products related to the sport of rugby. 

Polo argued that although clothes for playing rugby exist, these are excluded from their registration.  Also the public would see RUGBY as a trade mark belonging to Polo and not deceptive as their clothing items were not for use for the game of rugby.

OHIM agreed that given that clothes for playing rugby had been excluded, the mark could not be found descriptive and that also just because the items of clothing were not rugby style clothing it could also not be found to be deceptive.  Therefore the cancellation was rejected and a cost award was made against American Clothing.  American Clothing have until the end of December to appeal this decision.

American Clothing’s cancellation action followed that filed by a wholly owned subsidiary of the International Rugby Board (IRFB) in June 2007.  These proceedings are currently suspended on request of both parties.   IRFB are also claiming that the mark is descriptive and deceptive but also that Polo acted in bad faith when filing the application and that no one business should have a monopoly in the term “RUGBY “.  Given that these additional arguments are unlikely to be successful, Polo should now be confident that they will also be able to defeat this opposition.

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