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Friday, 9 February 2018

Yet another horse – The Polo/Lauren Company L.P. v Royal County of Berkshire Polo Club Ltd

Trade mark matters involving Polo/Lauren seem to crop up in many jurisdictions, with varying results. A particularly interesting recent case in this vein was adjudicated by the Intellectual Property Office of Singapore. Kat friend Penelope Ng from Bird & Bird ATMD provides an instructive summary of this lengthy decision.

"A horse is a horse is a horse." Maybe not always, though, when the marks of The Polo/Lauren Company L.P. are involved. Consider the recently unsuccessful invalidation action brought by Polo/Lauren in Singapore. Royal County of Berkshire Polo Club Ltd owns the trade mark, which is registered in Singapore in Classes 9, 18 and 25 for various goods, including spectacles, leather goods, and articles of clothing. Polo/Lauren sought to invalidate the subject mark, but the Intellectual Property Office of Singapore (IPOS) rejected its claim.
In seeking invalidation, Polo/Lauren relied on its prior registrations for:

(in Classes 9, 18 and 25) ("Device Mark");

• "POLO" (in Classes 9, 18 and 25) ("Word Mark"); and

(in Class 18) ("Composite Mark")
(collectively the "Applicant's Marks"), and raised the following grounds under the Trade Marks Act:-
• Likelihood of confusion based on similarity of marks and goods;

• Well-known mark deserving of protection against a damaging connection; and

• Use of the subject mark liable to be prevented by law of passing off.
The claim failed on all grounds, for the reasons described below.

No mark-similarity between subject mark and Device Mark / Word Mark

The Principal Assistant Registrar held the subject mark to be dissimilar to each of the Device Mark and Word Mark. She reasoned as follows:-
• The marks were visually dissimilar. The subject mark contained additional elements – the two rows of text ("Royal County of Berkshire" in a bold and stylised font, and "POLO CLUB") were "equally significant" as the polo player device and therefore not negligible.

• No aural comparison could be made vis-a-vis the Device Mark as it had no verbal elements. As against the Word Mark, there was no aural similarity as the subject mark would likely be referred to as "Royal County of Berkshire Polo Club", or "Royal County of Berkshire" for short.

• There was no conceptual similarity. Whereas Polo/Lauren's marks conveyed the idea of a game of polo, the subject mark (given its textual elements) evoked the idea of a place or location, or a particular polo club.
Low degree of mark-similarity between subject mark and Composite Mark

As regards the Composite Mark, it was found that there was a low degree of similarity. The average consumer is unlikely to notice the similarities (i.e. the word "POLO" and the polo player device) without also noticing that the subject mark contains additional words. While the goods concerned were identical, no likelihood of confusion was found, inter alia, because the goods were considered fashionable items and highly personal in nature and thus unlikely to be purchased in a hurry. Given the low degree of mark-similarity, the average consumer even with imperfect recollection was unlikely to be confused.

In rejecting the claims of invalidation, the two following points were also considered. First, as part of the analysis, the distinctiveness of the marks was considered. Royal County of Berkshire Polo Club argued that the fact that there are numerous marks on the Register containing the word "POLO" and/or a polo player device suggests that these elements are common and lack distinctiveness. However, the Principal Assistant Registrar stated that reference to trade mark registrations alone is not conclusive, as it does not reflect the situation in the market.

The other registered trade marks could either be dissimilar or do not lead to a likelihood of confusion. To prove that an element lacks distinctiveness, it would be more helpful to tender evidence that demonstrates that consumers have been exposed to widespread use of, and become accustomed to, trade marks that include the element in question. Ultimately, the distinctiveness for the Word Mark was extremely low in relation to "polo shirts" and "t-shirts", but normal in relation to the other goods in Classes 9, 18 and 25, and normal for the Device Mark and Composite Mark.

Second, the Principal Assistant Registrar found that the evidence adduced by Polo/Lauren did not prove that consumers identified each of the Applicant's Marks standing alone with Polo/Lauren, as a bulk of the evidence showed the Applicant's Marks used in conjunction with the highly distinctive words "RALPH LAUREN". Polo/Lauren therefore failed to establish: (i) the reputation of its marks (relevant to the likelihood of confusion inquiry); (ii) that its marks are well-known in Singapore; and (iii) that the Word Mark and Device Mark are distinctive of the Applicant's goods and no other (relevant to the passing off ground). This case therefore stresses the importance of tendering mark-specific evidence.

1 comment:

IP Factor said...

We had a similar case in Israel: see also

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