Background

Lifestyle Equities, owner of the BEVERLY HILLS POLO CLUB marks, made headlines last year with their battle against the Royal County of Berkshire Polo Club Ltd (reported by us here).

In yet another trade mark rodeo, Lifestyle Equities have successfully defended their EUTM registration for ‘BEVERLY HILLS POLO CLUB’ (the contested mark) No. 017010273 (the contested registration) from an invalidity action filed by Natalia Buzzetti, proprietor of EUTM application No. 018839396 (displayed below). 

The invalidity action came as a counter-attack against an earlier opposition filed by Lifestyle Equities against Buzzetti’s EUTM application. 

First Instance Decision

The arguments put forward by the invalidity applicant can be summarised as follows:

1. the contested mark is deceptive because it refers to a “Beverly Hills Polo Club” which does not exist. 
2. consumers would be led to believe that the goods bearing the contested mark come from a polo club in Beverly Hills or with its consent; and
3. being ‘one of the most fashionable locations in the world’, the use of ‘BEVERLY HILLS’ raised a false impression of geographical origin, deceiving consumers into believing that the products were manufactured in Beverly Hills.

These arguments were rejected by the Cancellation Division at first instance on the following grounds:

1. the invalidity applicant failed to sufficiently explain why the mark is deceptive in relation to each of the listed registered goods;
2. the geographical origin argument was not relevant as Beverly Hills is not ‘exclusively associated’ with the registered goods such as clothing, watches, perfumery, and so forth (despite its reputation as an affluent and prestigious location); and
3. the contested registration does not cover ‘polo club’ goods or services.

The Cancellation Division did not find actual deceit or a sufficiently serious risk that the consumer will be deceived so the declaration of invalidity was dismissed. 

Appeal

In late 2024, the invalidity applicant appealed the decision on the following grounds:

1. the Cancellation Division treated the contested registration as a geographical designation (and solely focussed on the word ‘Beverly Hills’ and whether the goods can be produced there), rather than assessing the mark in its entirety;
2. the contested mark, taken as a whole, recalls a polo club in Beverly Hills. The presence of ‘Beverly Hills’ in the mark adds an element of glamour, attractiveness and exclusiveness, which will influence consumers to link the goods to a prestigious location; and
3. it is very common for sports clubs to merchandise goods (particularly clothing) under their brand name. Polo club trade marks in particular convey ideological values (namely, relating to exclusivity and prestige), in addition to their essential function as an identifier of goods or services. As such, consumers would consider the contested mark to convey an exclusive club in a sophisticated place (i.e. Beverly Hills). The fact that such a club does not exist leads to the deception.

Appeal Decision

The appeal was dismissed.

The Fifth Board of Appeal held that the list of goods protected by the contested registration did not in any way indicate:

1. their geographical origin;
2. their place of manufacture; or
3. that they were marketed or licensed by a polo club in Beverly Hills.

As such, the mark ‘BEVERLY HILLS POLO CLUB’ was held not to be misleading.

Moreover, the appeal was dismissed due to the quality of the invalidity applicant’s evidence – much of which was undated and could not guarantee to provide reliable information at the relevant date.

Interestingly, the Court agreed with Buzzetti that the sign may bring to mind an air of prestige and exclusivity (based on the affluent reputation of Beverly Hills and polo as a sport), but merely evocating such connotations is insufficient to establish a risk of deception.

Case Comments

While keeping evidence organised and dated is generally considered good housekeeping, this decision is a perfect reminder of how evidence can make or break a case. 

Although the earlier judgment in Lifestyle Equities v Royal County of Berkshire Polo Club Ltd focussed on trade mark infringement and passing off, it had discussed evidence at some length. This decision hammered the point home further, but in relation to deception and the consumer’s perspective, rather than market perception. This decision illustrates the importance of properly substantiating claims of deception. Evidence must go further than merely showing an “objectively false or misleading message about the specific, verifiable characteristics of the goods covered by the application”. 

Although unsuccessful, the geographical origin argument is also interesting here. While it is difficult to ignore the glitz and glamour associated with Beverly Hills, it is not a famous destination for polo, and the contested registration does not cover any goods that specifically relate to polo. Had the applicant’s evidence been stronger, then this argument may have gained more traction. 

Will this be the final match between the parties, or does the future hold another chukka in sight?