Polo/Lauren Co LP v United States Polo Association: Trade Mark Dispute over Polo Player Device

The Polo/Lauren Company, L.P. appealed against the decision of the adjudicator to dismiss their opposition to the registration of the United States Polo Association's trade mark. The High Court dismissed the appeal, finding a low degree of visual similarity between the marks and that there was no likelihood of confusion under s 8(2)(b) of the Trade Marks Act. The claim was related to trade mark infringement.

1. Case Overview

1.1 Court

High Court of the Republic of Singapore

1.2 Outcome

Appeal dismissed with costs to the defendant.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Judgment

1.5 Jurisdiction

Singapore

1.6 Description

Appeal regarding trade mark registration. The court dismissed the appeal, finding a low likelihood of confusion between the marks.

1.7 Decision Date

7 March 2016

2. Parties and Outcomes

Party Name	Role	Type	Outcome	Outcome Type	Counsels
The Polo/Lauren Company, LP	Plaintiff, Appellant	Corporation	Appeal Dismissed	Lost	Sukumar s/o Karuppiah of Ravindran Associates Jaswin Kaur Khosa of Ravindran Associates
United States Polo Association	Defendant, Respondent	Association	Appeal Dismissed	Won	Chow Jian Hong of Mirandah Law LLP Prithipal Singh of Mirandah Law LLP

3. Judges

Judge Name	Title	Delivered Judgment
Lee Seiu Kin	Judge	Yes

4. Counsels

Counsel Name	Organization
Sukumar s/o Karuppiah	Ravindran Associates
Jaswin Kaur Khosa	Ravindran Associates
Chow Jian Hong	Mirandah Law LLP
Prithipal Singh	Mirandah Law LLP

4. Facts

The plaintiff is the registered proprietor of a family of trade marks which comprise a single polo player in action.
The defendant is the governing body of the sport of polo in the United States.
The defendant applied to register Trade Mark Application No T1215440A in Class 9 for eyewear.
The Application Mark comprises a graphical representation of two overlapping polo players on horseback in a linear perspective and the text “USPA”.
The plaintiff filed its Notice of Opposition to the defendant’s application, citing bad faith and likelihood of confusion.
The Adjudicator dismissed the plaintiff’s opposition, finding a low degree of visual similarity between the marks and no likelihood of confusion.
The plaintiff appealed against the Adjudicator’s decision.

5. Formal Citations

Polo/Lauren Co LP v United States Polo Association, Tribunal Appeal No 13 of 2015, [2016] SGHC 32

6. Timeline

Date	Event
2012-10-17	Defendant applied to register Trade Mark Application No T1215440A
2012-11-30	Defendant’s application published in the Trade Marks Journal
2013-01-29	Plaintiff filed its Notice of Opposition to the defendant’s application
2015-11-30	Judgment reserved
2016-03-08	Judgment reserved

7. Legal Issues

Trade Mark Infringement
- Outcome: The court found that there was a low degree of similarity between the trade marks and no likelihood of confusion, dismissing the appeal.
- Category: Substantive
- Sub-Issues:
  - Similarity of marks
  - Likelihood of confusion
- Related Cases:
  - [2015] SGIPOS 10
  - [2014] 1 SLR 911
  - [2013] 2 SLR 941
Similarity of Marks
- Outcome: The court found conceptual identity, no aural similarity, and a low degree of visual similarity between the marks.
- Category: Substantive
- Sub-Issues:
  - Visual similarity
  - Aural similarity
  - Conceptual similarity
  - Dominant component of mark
  - Distinctiveness of mark
- Related Cases:
  - [2013] 2 SLR 941
  - [2014] 1 SLR 911
Likelihood of Confusion
- Outcome: The court found no likelihood of confusion on the part of the public under s 8(2)(b) of the TMA.
- Category: Substantive
- Sub-Issues:
  - Degree of similarity between marks
  - Reputation of marks
  - Normal price of goods
  - Nature of goods
  - Frequency and typical mode of purchase of goods
- Related Cases:
  - [2014] 1 SLR 911

8. Remedies Sought

Opposition to trade mark registration

9. Cause of Actions

Trade Mark Infringement

10. Practice Areas

Trade Mark Litigation
Intellectual Property Litigation

11. Industries

Fashion
Retail

12. Cited Cases

Case Name	Court	Affirmed	Citation	Jurisdiction	Significance
The Polo/Lauren Company, L.P. v United States Polo Association	Singapore Intellectual Property Office	Yes	[2015] SGIPOS 10	Singapore	This is the decision of the adjudicator being appealed. The appeal was dismissed.
Polo/Lauren Co LP v United States Polo Association and another action	High Court	Yes	[2002] 1 SLR(R) 129	Singapore	Cited to show the history of disputes between the parties; the plaintiff unsuccessfully applied to set aside the defendant’s registration of its trademark.
Future Enterprises Pte Ltd v McDonald’s Corp	Court of Appeal	Yes	[2007] 2 SLR(R) 845	Singapore	Cited for the principle that an appellate court should not disturb the findings of fact of a trade mark tribunal unless there is a material error of principle.
SC Prodal 94 SRL v Spirits International NV	High Court of Justice (Chancery Division)	Yes	[2003] EWHC 2756 (Ch)	England and Wales	Cited by the Court of Appeal in Future Enterprises for the principle that an appellate court should not overturn a decision of the Trade Mark Registry simply because it comes to the conclusion that it might have decided the case differently.
MediaCorp News Pte Ltd v Astro All Asia Networks plc	High Court	Yes	[2009] 4 SLR(R) 496	Singapore	Cited for observations on the effect of O 87 r 4(2) of the Rules of Court regarding proceedings being 'by way of rehearing'.
Valentino Globe BV v Pacific Rim Industries Inc	High Court	Yes	[2009] 4 SLR(R) 577	Singapore	Cited for similar observations as in MediaCorp News Pte Ltd v Astro All Asia Networks plc.
Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal	Court of Appeal	Yes	[2013] 2 SLR 941	Singapore	Cited for the assessment of similarity between marks, comprising visual, aural and conceptual similarities.
Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal	Court of Appeal	Yes	[2014] 1 SLR 911	Singapore	Cited for the broad principles that guide the court in assessing the likelihood of confusion arising out of the similarity between competing marks and the parties’ services.
Clinique Laboratories, LLC v Clinique Suisse Pte Ltd and another	High Court	Yes	[2010] 4 SLR 510	Singapore	Cited for the principle that the test for visual similarity is not one of substantial reproduction.
Ozone Community Corp v Advance Magazine Publishers Inc	High Court	Yes	[2010] 2 SLR 459	Singapore	Cited for the principle that the test for visual similarity is not one of substantial reproduction.
Dainichiseika Colour & Chemicals Mfg Co Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (Case T-389/03)	European Court of Justice	Yes	[2008] ECR II-58	European Union	Cited for the principle that graphic devices would be verbalised in accordance with what they depicted.
S Tous, S L v Ng Wee Ping	Intellectual Property Office of Singapore	Yes	[2010] SGIPOS 6	Singapore	Cited for the principle that graphic devices would be verbalised in accordance with what they depicted.
Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd	Intellectual Property Office of Singapore	Yes	[2014] SGIPOS 10	Singapore	Cited for the principle that there could be no aural similarity given that the mark which the opponent sought to rely on had no aural component.
Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd	High Court	Yes	[2015] 5 SLR 618	Singapore	Cited as the appeal to the High Court in Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd.
La Societe Des Brasseries Et Glacieres Internationales v Asia Pacific Breweries Ltd	Intellectual Property Office of Singapore	Yes	[2006] SGIPOS 5	Singapore	Cited for the principle that the average consumer was more likely to refer to the applicant’s beer as a “tiger” brand beer because the graphical depiction of the tiger was more prominent.
Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA	Court of Appeal	Yes	[2013] 1 SLR 531	Singapore	Cited for the principle that the question of whether marks are similar will oftentimes depend on the inherent or acquired distinctiveness of the mark for the goods for which it has been registered.
Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc	European Court of Justice	Yes	[1999] RPC 117	European Union	Cited for a question referred to the Court of Justice of the European Union regarding the similarity of goods or services covered by the two marks.
The Polo/Lauren Co, LP v Shop In Department Store Pte Ltd	Court of Appeal	Yes	[2006] 2 SLR(R) 690	Singapore	Cited for the holding that the word “POLO” was found not to have acquired distinctiveness through use as the appellant there had never used the word mark “POLO” on its own.
Lonsdale Sports Ltd v Erol	Patents Court	Yes	[2014] RPC 15	England and Wales	Cited for the principle that distinctiveness may be acquired through use in conjunction with another mark.
Saville Perfumery Ld v June Perfect Ld and W Woolworth & Co Ld	Court of Appeal	Yes	(1941) 58 RPC 147	England and Wales	Cited for the test that the question of resemblance and the likelihood of deception are to be considered by reference not only to the whole mark, but also to its distinguishing or essential features, if any.
Castellani SpA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (Case T-149/06)	European Court of First Instance	Yes	[2007] ECR II-4755	European Union	Cited for the principle that consumers would pay less attention to a prefix if the use of the word is very common for the class of goods for which registration was sought.

13. Applicable Rules

Rule Name
Rules of Court (Cap 322, R 5, 2014 Rev Ed) O 87 r 4(2)

14. Applicable Statutes

Statute Name	Jurisdiction
Trade Marks Act (Cap 332, 2005 Rev Ed) s 8(2)(b)	Singapore
Trade Marks Act (Cap 332, 2005 Rev Ed) s 7(6)	Singapore
Trade Marks Act s 7(2)	Singapore
Trade Marks Act s 7(1)(d)	Singapore

15. Key Terms and Keywords

15.1 Key Terms

Trade mark
Opposition
Visual similarity
Aural similarity
Conceptual similarity
Likelihood of confusion
Dominant component
Distinctiveness
Eyewear
Polo player device
USPA

15.2 Keywords

Trade mark
Opposition
Polo
USPA
Eyewear
Singapore

17. Areas of Law

Area Name	Relevance Score
Trademarks	90
Commercial Law	10

16. Subjects

Trade Marks
Intellectual Property