The Polo/Lauren Co, LP v Shop-In Department Store: Trade Mark Infringement Analysis

The Polo/Lauren Co, LP, a US-based entity, appealed against the decision of the High Court of Singapore, which dismissed their action against Shop-In Department Store Pte Ltd for trade mark infringement under Section 27(2)(b) of the Trade Marks Act. The Polo/Lauren Co, LP alleged that Shop-In Department Store Pte Ltd's use of the sign 'POLO PACIFIC' infringed their registered 'POLO' word mark. The Court of Appeal dismissed the appeal, finding that the sign 'POLO PACIFIC' was not similar to the 'POLO' mark and that there was no likelihood of confusion on the part of the public.

1. Case Overview

1.1 Court

Court of Appeal

1.2 Outcome

Appeal Dismissed

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Grounds of Decision

1.5 Jurisdiction

Singapore

1.6 Description

Appeal dismissed in trade mark infringement case. Court found 'POLO PACIFIC' not similar to 'POLO' and no likelihood of confusion existed.

1.7 Decision Date

5 April 2006

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
The Polo/Lauren Co, LP	Appellant	Corporation	Appeal Dismissed	Lost	M. Ravindran of Ravindran Associates Sukumar Karuppiah of Ravindran Associates Adrian Kwong of Ravindran Associates
Shop-In Department Store Pte Ltd	Respondent	Corporation	Appeal Dismissed	Won	Anthony Lee Hwee Khiam of Bih Li & Lee Alvin Chen Yi Jing of Bih Li & Lee

3. Judges

Judge Name	Title	Delivered Judgment
Chao Hick Tin	Justice of Appeal	Yes
Tan Lee Meng	Judge	No
Yong Pung How	Chief Justice	No

4. Counsels

Counsel Name	Organization
M. Ravindran	Ravindran Associates
Sukumar Karuppiah	Ravindran Associates
Adrian Kwong	Ravindran Associates
Anthony Lee Hwee Khiam	Bih Li & Lee
Alvin Chen Yi Jing	Bih Li & Lee

4. Facts

The Polo/Lauren Co, LP owns the registered word mark 'POLO'.
Shop-In Department Store Pte Ltd sold goods bearing the sign 'POLO PACIFIC'.
The Polo/Lauren Co, LP alleged trade mark infringement under s 27(2)(b) of the Trade Marks Act.
Shop-In Department Store Pte Ltd's goods were sold at lower prices in suburban stores.
The Polo/Lauren Co, LP's goods are sold in upmarket boutiques.
The appellant had not done anything either to promote or use the mark “POLO” on its own.
The mark “POLO” has always been used and linked with Ralph Lauren.

5. Formal Citations

The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd, CA 67/2005, [2006] SGCA 14

6. Timeline

Date	Event
2002-01-01	Respondent allegedly infringed appellant’s trade marks.
2003-04-25	Respondent gave an undertaking not to infringe the appellant’s marks in the future.
2004-01-01	Respondent imported clothing, handbags and shoes bearing the sign 'POLO PACIFIC'.
2004-05-07	Respondent applied to register the sign 'POLO PACIFIC'.
2004-09-06	Appellant commenced action against respondent.
2004-12-02	Respondent's application to register 'POLO PACIFIC' was accepted for publication.
2006-02-21	Appeal heard.
2006-04-06	Appeal dismissed.

7. Legal Issues

Trade Mark Infringement
- Outcome: The court held that the sign 'POLO PACIFIC' was not similar to the 'POLO' mark and that there was no likelihood of confusion on the part of the public, therefore no infringement.
- Category: Substantive
- Sub-Issues:
  - Similarity of Marks
  - Likelihood of Confusion
- Related Cases:
  - [1996] RPC 281
  - [1998] RPC 199
  - [1999] RPC 117

8. Remedies Sought

Injunction
Damages

9. Cause of Actions

Trade Mark Infringement

10. Practice Areas

Trade Mark Infringement
Intellectual Property Litigation

11. Industries

Retail
Fashion

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
British Sugar plc v James Robertson & Sons Ltd	N/A	Yes	[1996] RPC 281	England and Wales	Cited for the three-step approach to determine trade mark infringement.
Sabel BV v Puma AG, Rudolf Dassler Sport	European Court of Justice	No	[1998] RPC 199	European Union	Cited for the global assessment test focusing on the likelihood of confusion.
Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc	European Court of Justice	No	[1999] RPC 117	European Union	Cited for the global assessment test focusing on the likelihood of confusion.
Kellogg Co v Pacific Food Products Sdn Bhd	N/A	Yes	[1999] 2 SLR 651	Singapore	Cited for the principle that the court can look outside the mark and sign to assess likelihood of confusion.
McDonald’s Corp v Future Enterprises Pte Ltd	N/A	Yes	[2005] 1 SLR 177	Singapore	Cited for the principle that the court can look outside the mark and sign to assess likelihood of confusion.
Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd	Federal Court of Australia	No	[1993] 26 IPR 246	Australia	Cited by the appellant to assert that the word 'polo' is distinctive.
de Cordova v Vick Chemical Coy	N/A	Yes	(1951) 68 RPC 103	N/A	Cited for the principle that a mark is infringed by using its essential features.
10 Royal Berkshire Polo Club Trade Mark	N/A	No	[2001] RPC 32	England and Wales	Cited to compare the proprietor's promotion of the mark 'POLO'.
Aktiebolaget Volvo v Heritage (Leicester) Limited	N/A	No	[2000] FSR 253	England and Wales	Cited to contrast with the present case, as 'Volvo' is an inventive word and distinctive.
Pan-West (Pte) Ltd v Grand Bigwin Pte Ltd	N/A	No	[2003] 4 SLR 755	Singapore	Cited by the appellant to argue that the court should hold that the appellant's mark and the respondent's sign were at least similar.
Origins Natural Resources Inc v Origin Clothing Ltd	N/A	No	[1995] FSR 280	England and Wales	Cited to show a stricter approach to the question of what is 'identical'.
SA Société LTJ Diffusion v Sadas Vertbaudet SA	European Court of Justice	Yes	[2003] FSR 34	European Union	Cited for the principle that the criterion of identity of the sign and the trade mark must be interpreted strictly.
Jordache Enterprises Inc v Millennium Pte Ltd	N/A	Yes	[1984–1985] SLR 566	Singapore	Cited as an illustration of two marks being similar.
Saville Perfumery Ld v June Perfect Ld and F W Woolworth & Co Ld	N/A	No	(1941) 58 RPC 147	N/A	Cited by the appellant to argue that if the sign includes the entire mark of the proprietor, there is ipso facto infringement.
In the Matter of an Application by the Pianotist Company Ld for the Registration of a Trade Mark	N/A	Yes	(1906) 23 RPC 774	N/A	Cited for the approach to determine the issue of confusion.
Cooper Engineering Company Proprietary Limited v Sigmund Pumps Limited	N/A	Yes	[1952] 86 CLR 536	Australia	Cited for the principle that one must look at the mark and the sign as a whole.
Associated Newspapers Ltd v Express Newspapers	N/A	Yes	[2003] FSR 51	England and Wales	Cited for the principle that the question of likelihood of confusion has to be looked at globally.
Premier Brands UK Ltd v Typhoon Europe Ltd	N/A	No	[2000] FSR 767	England and Wales	Cited for the factors to consider when determining whether there would be confusion.
Polo/Lauren Co LP v United States Polo Association	N/A	No	[2002] 1 SLR 326	Singapore	Cited for the principle that one should not determine likelihood of confusion based on a man in a hurry.
Tong Guan Food Products Pte Ltd v Hoe Huat Hng Foodstuffs Pte Ltd	N/A	Yes	[1991] SLR 133	Singapore	Cited for the requirement of misrepresentation in a passing-off action.
Wagamama Ltd v City Centre Restaurants Plc	N/A	Yes	[1995] FSR 713	England and Wales	Cited for the principle that the question whether there has been trade mark infringement is more 'a matter of feel than science'.
Samsonite Corp v Montres Rolex SA	N/A	Yes	[1995] AIPR 244	N/A	it was held 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.
The European Limited v The Economist Newspaper Limited	N/A	Yes	[1998] FSR 283	N/A	the courts should be wary of granting a monopoly in their use where common words are included in a registered mark
“FRIGIKING” Trade Mark	N/A	Yes	[1973] RPC 739	N/A	the courts should be wary of granting a monopoly in their use where common words are included in a registered mark
Celine SA’s Trade Mark Applications	N/A	Yes	[1985] RPC 381	N/A	So also is the kind of customer who would be likely to buy the goods of the appellant and the respondent

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute Name	Jurisdiction
Section 27(2)(b) Trade Marks Act	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Trade Mark
Infringement
Likelihood of Confusion
Similarity
Distinctiveness
Section 27(2)(b) Trade Marks Act
British Sugar Test
Global Assessment Test
POLO
POLO PACIFIC

15.2 Keywords

Trade Mark
Infringement
Polo
Singapore
Appeal
Intellectual Property

17. Areas of Law

Area Name	Relevance Score
Trademarks	95
Trademark Infringement	95
Commercial Law	30
Contract Law	20

16. Subjects

Trade Mark Infringement
Intellectual Property