Background of the case

On 29 September 2004, The Polo/Lauren Company LP applied for registration as an EUTM of a figurative sign consisting of a polo player on a horseback holding up his black polo stick. The mark was registered on 3 November 2005.

Against this application, on 23 February 2016, the appellant, Style & Taste, S. L., filed an application for a declaration of invalidity of the trade mark on the basis of an industrial property right, specifically, on a Spanish design registered on 4 March 1997, very similar to the sign at issue:

By decision of 10 May 2018, the EUIPO rejected the application for invalidity, a decision that was appealed before the Office itself, and was again rejected by decision of 7 January 2019 on the grounds that the registration of the previous design had expired on 22 May 2017.

Finally, Style & Taste appealed to the General Court of the European Union, arguing that Spanish law did not allow to renew the registration of that design, but that the design had not disappeared because it had expired, requesting that the contested decision be amended, declaring the invalidity of Ralph Lauren’s trademark.

Decision of the General Court

First, the judgment states that in order to apply for a declaration of invalidity of the trade mark pursuant to Article 52(2)(d) of the EUTM Regulation, the Spanish company must necessarily prove the existence of a conflict with that trade mark from the date of filing of the application or priority of the application. It must also prove that that the right entitles to prohibit the use of that mark on the date of filing or priority of the application. Therefore, if an earlier trade mark or design is invoked in support of an application for a declaration of invalidity, but it no longer enjoys of protection within the European Union on the date on which the EUIPO issues the decision, the application for a declaration of invalidity must be rejected.

In this case, it is not disputed that the registration of the earlier design expired in 2017, i.e. before the adoption of the contested decision on 7 January 2019. And while the appellant claims that Spanish law did not allow to renew the registration of that design, but that the protection of the design had not disappeared because it had expired, it does not claim or, a fortiori, demonstrate that, under Spanish law, it is possible to prohibit the use of an EUTM by virtue of such a design after the expiry of its registration. Consequently, and given that the design had expired, the General Court refused to declare the trade mark invalid.

In conclusion, the appellant’s application for a declaration of invalidity is dismissed and the logo of the New York company Polo Ralph Lauren will remain a registered trade mark in the European Union.

Judgment of the General Court of the European Union in Case T-169/19 of 2 June 2021.