Trademark Conflict, the Role of the Licensee, and Criteria for Likelihood of Confusion: The U.S. Polo Association Case
In the context of industrial property law, trademark conflicts represent one of the most sensitive and strategic issues for businesses and licensees. A recent decision by the Court of Venice (order dated January 27, 2025) in the precautionary proceedings between USPA Global Licensing Inc. and Giangi Srl provides valuable insights into the licensee's standing to bring an action and the criteria for assessing the likelihood of confusion between distinctive signs.
The Role of the Licensee in Litigation
The Court reaffirmed a fundamental principle: once the trademark owner has initiated litigation, the licensee cannot act independently, but only has the right to intervene in the proceedings initiated by the owner. This limitation is intended to prevent the fragmentation of proceedings and the proliferation of parallel disputes.
In this case, USPAGL and IN.CO.M. Spa had initiated precautionary proceedings parallel to those already initiated by the owner (USPA) before the Court of Genoa. The Judge therefore found that the appellants lacked standing to sue for the trademarks already at issue in the main proceedings. However, the Judge recognized the licensee's right to sue against parties not involved in the pending proceedings (such as Pittarello Spa) and for trademarks not yet enforced by the owner.
Likelihood of Confusion Between Trademarks: The Court's Assessment
The Venetian ruling also offered a thorough examination of the likelihood of confusion between the USPA trademarks and those registered by Giangi Srl, which also depict subjects on horseback in a sporting pose.
The Jurisprudential Principles Recalled
The Judge reiterated that:
The assessment must be carried out in a comprehensive and synthetic manner, considering visual, phonetic, conceptual and semantic elements.
In complex trademarks, figurative and word elements must be evaluated with equal attention.
The degree of distinctiveness affects protection: the greater the distinctiveness, the broader the scope of protection.
The Court held that, despite the presence of a well-known trademark like USPA's, the figurative element of the polo player does not enjoy absolute exclusivity. In particular:
The images in Giangi's trademarks did not show players with polo sticks, but with flags, one of which was British.
The overall visual and conceptual impression was sufficiently different to exclude a risk of confusion or direct association.
Therefore, there was no evidence of counterfeiting or unfair competition, and the appeal was dismissed with costs.
The Concept of Distinctiveness: A Thin Line
The Court also addressed the issue of trademark distinctiveness, reaffirming the "capriciousness curve" theory, according to which a strong trademark lies at the extreme of an absent logical connection between the sign and the product. However, in the case at hand, the use of the polo reference was not considered sufficiently arbitrary, given its widespread use in the fashion and accessories sector, including for brands such as Ralph Lauren and La Martina.
Conclusions
The USPA case represents a significant precedent for businesses and licensees: it establishes clear limits on licensees' entitlement and requires a rigorous approach to assessing likelihood of confusion. Generic similarity or the use of common symbols such as that of the polo player is not enough to establish a claim of infringement. A substantial similarity is required, capable of generating concrete confusion in the mind of the average consumer.
For professionals in the sector, the ruling is a warning to carefully evaluate the actual distinctiveness of the trademark and to manage disputes regarding industrial property in a coordinated and strategic manner.