Portal Golf Gestion v EUIPO 

Introduction

In a recent judgment concerning the world’s most famous golf tournament “The Masters”, the General Court has provided further clarity on and reaffirmed the scope of the enhanced protection afforded to trade marks with a reputation in the EU. 

Interestingly, this decision also sheds light on the EU’s approach, post Brexit, to the relevance of UK evidence in these types of proceedings. Since the UK left the EU, the EUIPO no longer considers a reputation confined to the UK as relevant when assessing a reputation in the EU, even if this reputation existed before the end of the transitionary period.

The Law

Under EU law, reputable trade marks enjoy a greater scope of protection than those without a reputation. According to Article 8(5) EUTMR 2017 a trade mark shall not be registered where it is identical with, or similar to, an earlier registered trade mark that has a reputation throughout the EU and its use, without due cause, is likely to take unfair advantage of, or be detrimental to the repute or distinctive character of the mark.

Key to understanding a claim under 8(5) is that a likelihood of confusion is not necessary to be successful, unlike under 8(1). Article 8(5) can be invoked irrespective of the identity, similarity or dissimilarity of the goods and services and merely requires the hypothetical purchaser or relevant public forms a “link” between the two trade marks, even though they do not confuse them.

Background

In December 2018, the Applicant (Portal Golf Gestion S.A.) filed an EU trade mark application in classes 09, 38, 42 and 45 for golf course management related goods and services for the following figurative trade mark:

In May 2019, the Opponent (Augusta National, Inc.) filed a notice of opposition against the application based on, in particular, its prior rights in the word mark MASTERS (IR designating the EU no. 1076672) registered in 2010 in classes 09, 38 and 41 for golf and golf tournament related goods and services. 

The Opponent relied on two grounds for its opposition, namely Articles 8(1)(b) and 8(5). However, the opposition was decided on the grounds of 8(5) only and therefore there was no consideration given to the claim under 8(1)(b).

In October 2021, the Opposition Division, upheld the opposition against all the goods and services on the basis of Article 8(5). 

The Opposition Division held that, taken as a whole, the evidence showed the Opponent’s trade mark had a reputation in EU and therefore the possibility of a link could not be ruled out. 

In particular, the Opposition Division held that:

1. There was overlap between the relevant public for both trade marks being composed of, in part, golf professionals. 
2. The evidence satisfactorily showed the Opponent had a reputation in the EU for “entertainment in the nature of golf tournaments” in Class 41.
3. The trade marks were, considering the phonetic, visual, and conceptual elements, at least similar to a low degree.
4. The trade mark MASTERS had, at least, a weak degree of distinctive character in respect of the reputed services.
5. There was some proximity between the nature of goods and services as they both related to golf. 

In December 2021, the Applicant filed a notice of appeal against the Opposition Division’s decision to the Board of Appeal of the EUIPO.

In August 2022, the Board of Appeal upheld the Opposition Division’s decision in its entirety.

In November 2022, the Applicant filed a notice of appeal against the Board of Appeal’s decision to the General Court. The Opponent also joined the appeal as an intervenor.

General Court Decision

On appeal, the Applicant argued:

1. The Applicant’s mark targeted companies that used golf courses while the earlier mark targeted golf players and enthusiasts. The Applicant’s relevant public is highly attentive due to the expensive nature of golf products.
2. The Board of Appeal was incorrect in finding a reputation was present, based largely on its own knowledge and evidence adduced from the UK and US. 
3. The evidence presented consisted of several different stylisations of the MASTERS trade mark which altered its distinctive character and was not suitable to prove a reputation.
4. The trade marks were dissimilar when comparing distinctive elements, such as the Applicant’s inclusion of “i” and “golf”, the colour scheme and the stylised icon included in the application.
5. The term MASTERS was devoid of any distinctive character in respect of “entertainment in the nature of golf tournaments.”
6. Considering the above, the relevant public is unlikely to link the trade marks.
7. Finally, even if there was a link, the Applicant could not take unfair advantage of the Opponent’s trade mark as it had co-existed with the Applicant’s Spanish trade mark for BB MASTER GOLF for over 20 years.

In November 2023, the General Court upheld the decision of the Board of Appeal in its entirety.

The General Court held that both marks targeted golf professionals so there was overlap. Importantly, due to the expensive nature of golf related goods and services, the relevant public here will be more attentive than the general public. 

The General Court disagreed with the Applicant concerning the basis for a finding of a reputation. The General Court held that the most important evidence was presented from Germany, France, Spain, Italy, and the Netherlands in finding there was a reputation. It is noteworthy that the General Court also stated that UK evidence (primarily composed of broadcast evidence), having cross border implications, could be used to support a reputation in other English speaking EU member states such as Ireland or Malta that share UK broadcast channels, for example, the BBC and Sky.

The General Court held that the different iterations of the trade mark presented in the evidence did not alter its distinctive character and were relevant. The additional elements such as stylisation, descriptive terms (e.g., USA, golf, Augusta) etc had a negligible impact on distinctive character.

The General Court dismissed the claim that the term MASTERS was devoid of distinctive character. While the degree of distinctiveness is relevant to the assessment of a link, if a trade mark is entirely devoid of distinctive character, the claim is that it was incorrectly registered and this was not a question to be answered in these proceedings. Such a claim is relevant to invalidity or cancellation proceedings.

The General Court rejected the argument that the marks were dissimilar. The reputed mark was almost wholly contained in the Applicant’s mark save for the final letter “s” and reaffirmed there was at least a low degree of similarity, when comparing the visual, aural, and conceptual elements. The additional elements in the application were not enough to find there was no similarity.

Considering all the relevant factors and circumstances, the General Court upheld that the existence of a link and taking unfair advantage could not be ruled out.

Finally, the General Court rejected the Spanish co-existence argument on the basis that this only related to Spain and the relevant trade mark was revoked before the filing date of the Opponent’s trade mark.

Comment

Overall, this is a welcome decision for brand owners of EU trade marks with a reputation. In addition, the comments concerning the UK evidence are also noteworthy especially in consideration of broadcasting. In this case, the application date of the opposed trade mark predated Brexit, which is the relevant date for the assessment of a reputation. At first glance, it appeared the EUIPO may reject evidence from the UK, even though it predated Brexit. 

It will be interesting to see if this decision is further tested by way of relying on broadcasting evidence from the UK with cross-border reach and whether this is also deemed sufficient to demonstrate reputation.

As a side remark, the Applicant in these proceedings operates a website under the domain open.imaster.golf which coincidentally also includes the word OPEN. Whether or not it is a coincidence is up for debate, but The Open, is the name of the world’s oldest golf tournament which is also one of the top golf tournaments in the world.