The Battle of the ‘POLO’ Logos

In the recent high profile case of The Polo/Lauren Company, L.P. v United States Polo Association [2015] SGIPOS 10, the Polo/Lauren Company L.P. (“the Opponents”) commenced opposition proceedings against United States Polo Association (“the Applicants”) in relation to a black-and-white trade mark featuring two polo players on horseback and the letters “USPA” (“the Trade Mark”).

The Opponents relied on two grounds of opposition under the Trade Marks Act (“the Act”):
(i) That the Trade Mark had been registered in bad faith, under Section 7(6) of the Act; and/or
(ii) That the Trade Mark was similar to the Opponents’ earlier registered mark for an identical class of goods, and that there existed a likelihood of confusion on the part of the public, under Section 8(2) of the Act.

IP Adjudicator, Professor Ng-Loy Wee Loon, who heard the case under IPOS’ IP Adjudicators Scheme, held that the Applicants should be allowed to register the Trade Mark and dismissed the grounds of opposition relied on by the Opponents.

Background
Facts
Since 1980, the Applicants have been the governing body of the polo sport in the United States. In the past decade, the Applicants have also entered the consumer product market selling clothing, watches, bags which are sold under various trade marks.

The Trade Mark, which is the subject-matter of this opposition, comprises the word “USPA” and a device depicting two polo players on horseback (Polo 1 ), and is registered under Class 9 for eyewear.

The Opponents own a family of trade marks including a device of a polo player on a horse ( Polo 2) in action alone or with words such as “RAPLH LAUREN” and “POLO RALPH LAUREN”.

Issues
There are two issues in this case namely:
(1) Whether the Applicant’s application to register the Trade Mark was made in bad faith because the application was prohibited by a settlement agreement signed in 2003 by both parties; and

(2) Whether the two trade marks were visually, aurally and/or conceptually similar.

Decision
(1) Bad Faith
The Opponent was not able to produce the 2003 Settlement Agreement and their entire case of bad faith was based purely on inferences. Under Singapore law, an allegation of bad faith is a serious claim to make which must be distinctly proved and this will be rarely possible by way of inference. As such, the IP Adjudicator held that the Opponents were not able to discharge the very high burden of proof required in an allegation of bad faith and thus the first Opponents’ ground of opposition under Section 7(6) failed.

(2) Similarity between the two trade marks
The IP Adjudicator applied the “step-by-step” approach in Section 8(2)(b) of the Act and found that there was only a very low degree of similarity between the two trade marks, and that there was identity between the goods.

In terms of visual similarity, the Opponents claimed that the horsemen image dominates the letters “USPA” and should be given more weight when comparing similar trade marks. On the other hand, the Applicants argued that the “USPA” letters were the “dominant component” of the logo and thus the “dissimilarity is clear”. The IP Adjudicator held that the mark has to be viewed in its entirety – with both the letters “USPA” and the horseback image, as neither was dominant. Comparing both marks as a whole, the IP Adjudicator found an extremely low degree of visual similarity.

Both parties agreed that there is no aural similarity between the two marks as there is no text in the Opponent’s mark to compare with the “USPA” letters.

On the issue of conceptual similarity, the Opponents submitted that there is a high degree of similarity as the idea behind both marks is the same, i.e. the sport of polo. Whereas the Applicants claimed that there is no conceptual similarity as their mark not only represents the sport of polo but also the “U.S. Polo Association”. The IP Adjudicator found that both marks are conceptually similar as a whole as both convey the idea of the game of polo.

Likelihood of Confusion
In order to succeed in an application under Section 8(2) of the Act, the Opponents also had to prove that there was a likelihood of confusion on the part of the public as to the origin of the two marks. In the likelihood of confusion inquiry, the IP Adjudicator found that eyewear was a type of goods the purchase of which involved a high degree of care regardless of price range. She adduced the following reasons – (1) eyewear was not purchased on a regular or frequent basis; (2) eyewear was usually bought through salespersons particularly when sold in optical shops; (3) eyewear was a type of good which would command a higher degree of fastidiousness on the part of the consumer who was likely to inspect the product closely in order to decide if the frame fits comfortably.

The high degree of care that the average consumer would exercise when purchasing eyewear, coupled with a very low degree of similarity between the two marks, were reasons for finding that there was no likelihood of confusion.

Conclusion
The battle is still on between renowned fashion brand Polo Ralph Lauren and the US Polo Association as the former has filed an appeal, disagreeing with the decision by IP Adjudicator, Professor Ng-Loy Wee Loon. Lawyers for US Polo Association confirmed that they have been served the appeal documents and will be preparing for the case.