The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd: Trade Mark Infringement & Likelihood of Confusion

The Polo/Lauren Co, LP, a limited partnership, sued Shop In Department Store Pte Ltd in the High Court of Singapore on 23 September 2005, alleging trade mark infringement under s 27(2)(b) of the Trade Marks Act and breach of an earlier undertaking. The Polo/Lauren Co, LP claimed that Shop In Department Store Pte Ltd's use of the sign "POLO PACIFIC" on clothing infringed its registered "POLO" trade marks. Lai Kew Chai J dismissed the plaintiff's claims, finding that the defendant's sign was not similar enough to the plaintiff's mark to cause a likelihood of confusion and therefore there was no breach of the undertaking.

1. Case Overview

1.1 Court

High Court

1.2 Outcome

Plaintiff's claims dismissed with costs.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

The Polo/Lauren Co, LP sues Shop In Department Store for trade mark infringement. The court dismissed the claim, finding no likelihood of confusion.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
The Polo/Lauren Co, LPPlaintiffCorporationClaim DismissedLost
Shop-In Department Store Pte LtdDefendantCorporationJudgment for DefendantWon

3. Judges

Judge NameTitleDelivered Judgment
Lai Kew ChaiJudgeYes

4. Counsels

Counsel NameOrganization
Sukumar s/o KaruppiahRavindran Associates
Kwong Sze Ken AdrianRavindran Associates
Lee Hwee Khiam AnthonyBih Li and Lee
Chen Yi Jing AlvinBih Li and Lee

4. Facts

  1. The plaintiff is the registered proprietor of several trade marks containing the word "POLO".
  2. The defendant imported and sold clothing bearing the sign "POLO PACIFIC".
  3. The plaintiff claimed that the defendant's sign infringed its trade marks.
  4. The defendant had previously given an undertaking not to infringe the plaintiff's trade marks.
  5. The defendant's stores are located in less central areas and target lower-income earners.
  6. The plaintiff's goods are sold in high-end boutiques and department store corners.
  7. The plaintiff's most distinctive trade marks are the polo player device and the Polo Ralph Lauren name.

5. Formal Citations

  1. The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd, Suit 733/2004, [2005] SGHC 175

6. Timeline

DateEvent
Defendant found selling counterfeit samples of the plaintiff’s goods.
Defendant made an undertaking not to infringe the plaintiff’s trade marks in the future.
Defendant decided to import goods bearing the sign “POLO PACIFIC”.
Earliest date that the defendant’s products were registered.
Plaintiff purchased clothing bearing the “POLO PACIFIC” sign from the defendant’s shop.
Plaintiff purchased clothing bearing the “POLO PACIFIC” sign from the defendant’s shop.
The “POLO PACIFIC” sign was accepted for publication.
Plaintiff filed a Notice of Opposition with the Registrar of Trade Marks.
Judgment delivered.

7. Legal Issues

  1. Trade Mark Infringement
    • Outcome: The court held that the defendant's sign was not similar enough to the plaintiff's mark to cause a likelihood of confusion, and therefore there was no trade mark infringement.
    • Category: Substantive
    • Sub-Issues:
      • Similarity of Marks
      • Similarity of Goods
      • Likelihood of Confusion
  2. Likelihood of Confusion
    • Outcome: The court found that there was no likelihood of confusion between the plaintiff's mark and the defendant's sign.
    • Category: Substantive

8. Remedies Sought

  1. Damages
  2. Injunction
  3. Costs on an indemnity basis

9. Cause of Actions

  • Trade Mark Infringement
  • Breach of Undertaking

10. Practice Areas

  • Trade Mark Infringement
  • Intellectual Property Litigation

11. Industries

  • Retail
  • Fashion

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
British Sugar plc v James Robertson & Sons LtdN/AYes[1996] RPC 281N/ACited for the classic formulation of trade mark infringement test.
Saville Perfumery Ld v June Perfect Ld and F W Woolworth & Co LdN/AYes(1941) 58 RPC 147N/ACited for the classic formulation of trade mark infringement test.
Wagamama Ltd v City Centre Restaurants PlcN/AYes[1995] FSR 713N/ACited for the classic formulation of trade mark infringement test.
Sabel BV v Puma AG, Rudolf Dassler SportEuropean Court of JusticeYes[1998] RPC 199European UnionCited as a leading European Court of Justice decision endorsing the global assessment test.
The European Limited v The Economist Newspaper LimitedEnglish Court of AppealYes[1998] FSR 283EnglandCited as a case following the global assessment test.
McDonald’s Corp v Future Enterprises Pte LtdSingapore Court of AppealYes[2005] 1 SLR 177SingaporeCited for the review of cases from various jurisdictions in a trade mark case and the factors to consider in assessing likelihood of confusion.
Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer IncN/AYes[1999] RPC 117N/ACited in relation to the global assessment test.
Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BVN/AYes[2000] FSR 77N/ACited in relation to the global assessment test.
Marca Mode CV v Adidas AGN/AYes[2000] 2 CMLR 1061N/ACited in relation to the global assessment test.
Origins Natural Resources Inc v Origin Clothing LimitedN/AYes[1995] FSR 280N/ACited regarding the discounting of external added matter or circumstances.
Compass Publishing BV v Compass Logistics LtdN/AYes[2004] RPC 41N/ACited for the principle that plaintiffs do not need to show actual confusion.
In the matter of an Application by Edward Hack for the Registration of a Trade MarkN/AYes(1941) 58 RPC 91N/ACited for the principle that plaintiffs do not need to show actual confusion.
In the matter of an Application by the Pianotist Company Ld for the Registration of a Trade MarkN/AYes(1906) 23 RPC 774N/ACited for the factors to consider when assessing the likelihood of confusion.
Sime Darby Edible Products Ltd v Ngo Chew Hong Edible Oil Pte LtdN/AYes[2000] 4 SLR 360SingaporeCited for affirming the Pianotist case and its summation of the law on the issue of confusion.
Kellogg Co v Pacific Food Products Sdn BhdCourt of AppealYes[1999] 2 SLR 651SingaporeCited for the factors to consider when determining the likelihood of confusion.
Pan-West (Pte) Ltd v Grand Bigwin Pte LtdN/AYes[2003] 4 SLR 755SingaporeCited for the principle that if there is no likelihood of confusion, there can be no infringement under s 27(2)(b) TMA.
The European Limited v The Economist Newspapers LimitedN/AYes[1996] FSR 431N/ACited for the principle that when there is a common denominator, it is important to look at the differences between the mark and the sign.
Samsonite Corp v Montres Rolex SAN/AYes[1995] AIPR 244N/ACited for the principle that just because the registered mark was wholly included in the challenged sign, it did not mean that it would necessarily cause confusion between the two.
Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty LtdN/AYes(1993) 26 IPR 246N/ACited for the principle that decisions which held that the taking of a word mark and adding to it an additional word constituted infringement, should not be applied mechanically.
Premier Brands UK Ltd v Typhoon Europe LtdN/AYes[2000] FSR 767N/ACited for the principle that a more distinct mark generally receives greater protection.
10 Royal Berkshire Polo Club Trade MarkN/AYes[2001] RPC 32N/ACited as a case where the court held the use of the word “POLO” as part of the applicant’s mark did not capture the distinctiveness of the opponent’s earlier trade marks.
Polo/Lauren Co LP v United States Polo AssociationHigh CourtYes[2002] 1 SLR 326SingaporeCited as a case where the court found that the pictorial device of the opponent and the applicant’s use of the letters “USPA” as part of their composite marks were sufficient to distinguish the applicant’s sign from the opponent’s registered marks.
“Bali” Trade MarkN/AYes[1969] RPC 472N/ACited for the principle that the ordinary consumer is likely to judge the mark and the sign by general impressions or by some significant detail rather than by any photographic recollection of the whole.
Tong Guan Food Products Pte Ltd v Hoe Huat Hng Foodstuff Pte LtdN/AYes[1991] SLR 133SingaporeCited for the description of the average consumer in Singapore.
Mothercare UK Ltd v Penguin Books LtdN/AYes[1988] RPC 113N/ACited for the principle that the courts are wary of allowing companies to monopolise words that are either purely descriptive or used in everyday parlance.
De Cordova v Vick Chemical CoyN/AYes(1951) 68 RPC 103N/ACited as a case where the courts appear more willing to extend protection to unique or invented trade words.
Associated Newspapers Ltd v Express NewspapersN/AYes[2003] FSR 51N/ACited as an example of a case where the defendant’s tendency to abbreviate its newspaper titles was found to infringe the plaintiff’s trade mark.
Hille International Ltd v Tiong Hin Engineering Pte LtdN/AYes[1982–1983] SLR 173SingaporeCited as an example of a case where the words would be mispronounced and mistaken for each other.
Jordache Enterprises Inc v Millennium Pte LtdN/AYes[1984–1985] SLR 566SingaporeCited as an example of a case where the words would be mispronounced and mistaken for each other.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Trade Marks Act (Cap 332, 1999 Rev Ed) s 27(2)(b)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Trade Mark
  • Infringement
  • Likelihood of Confusion
  • Similarity
  • Distinctiveness
  • Global Assessment Test
  • Undertaking
  • Trade Marks Act
  • Sign
  • Goods
  • Registered Mark
  • Polo Pacific
  • Polo
  • Class 25

15.2 Keywords

  • Trade Mark
  • Infringement
  • Polo
  • Fashion
  • Singapore
  • Intellectual Property

17. Areas of Law

Area NameRelevance Score
Trademarks95
Commercial Law30
Breach of Contract20

16. Subjects

  • Trade Mark Infringement
  • Intellectual Property
  • Trade Mark Law