Trademark Conflict, the Role of the Licensee, and the Likelihood of Confusion: The US Polo Association Case
In the field of intellectual property law, trademark disputes represent one of the most sensitive and strategic issues for companies and licensees. A recent ruling by the Court of Venice (order of January 27, 2025) in the preliminary injunction proceedings between USPA Global Licensing Inc. and Giangi Srl provides valuable insights into a licensee’s standing to sue 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 legal proceedings, the licensee may not act independently but is only entitled to intervene in the proceedings brought by the owner. This restriction is intended to prevent the fragmentation of proceedings and the proliferation of parallel lawsuits.
In the present case, USPAGL and IN.CO.M. Spa had initiated interim relief proceedings parallel to those already brought by the trademark owner (USPA) before the Court of Genoa. The judge therefore found that the plaintiffs lacked standing to sue regarding the trademarks already at issue in the main case. However, the licensee’s right to take action against parties not involved in the pending case (such as Pittarello spa) and regarding trademarks not yet asserted by the owner was recognized.
Likelihood of Confusion Between Trademarks: The Court’s Assessment
The Venetian ruling also provided a thorough analysis of the likelihood of confusion between the USPA trademarks and those registered by Giangi Srl, which also depict figures on horseback in a sporting pose.
The Legal Principles Cited
The judge reiterated that:
The evaluation should be conducted in a comprehensive and concise manner, taking into account visual, phonetic, conceptual, and semantic elements.
In complex trademarks, figurative and word elements must be given equal consideration.
The degree of distinctiveness affects the level of protection: the greater the distinctiveness, the broader the scope of protection.
The Court held that, even in the case of a well-known trademark such as USPA’s, the figurative element depicting the polo player does not enjoy absolute exclusivity. Specifically:
The images in Giangi's logos did not show players with polo mallets, but with flags, one of which was the British flag.
The overall visual and conceptual impression was sufficiently different to rule out any risk of confusion or direct association.
Therefore, there was no prima facie case of trademark infringement or unfair competition, and the appeal was dismissed, with the appellant ordered to pay the costs.
The Concept of Distinctiveness: A Fine Line
The Court also addressed the issue of the trademark’s distinctiveness, reaffirming the “whimsicality curve” theory, according to which a strong trademark is situated at the extreme end of a logical connection that is absent between the sign and the product. However, in the case at hand, the use of the reference to the pole was not considered sufficiently arbitrary, given its prevalence in the fashion and accessories sector, including for brands such as Ralph Lauren or La Martina.
Conclusions
The USPA case sets a significant precedent for companies and licensees: it establishes clear limits on the licensee’s rights and requires a rigorous approach to assessing likelihood of confusion. A mere generic similarity or the use of common symbols, such as the polo player, is not sufficient to support a claim of infringement. A substantial similarity is required—one capable of causing actual confusion in the mind of the average consumer.
For industry professionals, the ruling serves as a reminder to carefully assess the actual distinctiveness of a trademark and to manage intellectual property disputes in a coordinated and strategic manner.