POLO – A Gameplay of Trademarks

LexOrbis India

On July 14, 2023, a Single Judge in the matter of The Polo/Lauren Company LP v. M/s Home Needs [CS(COMM)1722/2020] held that the Defendant’s marks/labels “POLOLIFETIME” / “Polo Lifetime” were not deceptively similar to “POLO” and other “POLO” formative marks of the Plaintiff. In this case, the Plaintiff sought an interim injunction restraining the Defendant from inter alia exporting, manufacturing, advertising, selling, etc., its products under the trademarks/labels “POLO LIFETIME”,  and  (the “impugned marks”). The Plaintiff asserted that it was engaged in its celebrated and world-renowned business of manufacture, distribution, trade and sale of a wide range of clothing, fashion and lifestyle products including spans fashion wear, sportswear, eyewear, luggage, bags and luxurious home decor including bedding, towels, area rugs, wall covering, tabletop and table covering and other allied and related goods, and was also offering services in this connection. It was further stated that the Plaintiff had adopted the trademark “POLO” in the year 1967 and was subsequently using the “POLO” formative marks including word marks and various stylized representations in conjunction with other marks/words and device of a polo player in relations to its goods and services. A few examples of the famous POLO marks of the Plaintiff were ,  and . Further, the artistic works in these marks of the Plaintiff were asserted to be original artistic works under the scope of the Copyright Act, 1957. The Plaintiff also relied upon and asserted its trademark registrations for its POLO formative marks in class 25. It was also stated that the Plaintiff’s trademark was held to be “well-known” by the High Court of Delhi in the cases of The Polo Lauren Company L.P. vs. Rohit S. Bajaj in CS (OS) No. 1763/2005 and The Polo/Lauren Company L.P vs. Europa Bevcorp & Ors. dated 19.10.2022 in CS (Comm) No. 730 of 2022. It was further stated by the Plaintiff that it entered the Indian market through Aditya Birla Fashions and Retail Ltd. through a license agreement and launched its first store in Delhi (in September 2018).

The Defendant was engaged in the business of manufacturing a range of household products and kitchen utensils and other allied/related products using the impugned marks/labels, which were alleged to be violative of the Plaintiff’s statutory and common law rights over its “POLO” formative marks. The Defendant was also found to be operating its website and several social media platforms through which it was advertising the impugned goods and offering them for sale. The Plaintiff further informed that in the last week of October 2020, the Plaintiff came across the impugned mark POLO LIFETIME (Label) bearing Application Number 3836918 and the mark “POLO LIFETIME” (word) bearing Application Number 3836919, in Class 21, in the name of the Defendant. The Plaintiff had accordingly initiated opposition proceedings against the said applications. The Plaintiff had also initiated cancellation proceedings against the registration of the impugned trademark POLO LIFETIME (Label) under No. 2105994 in Class 21 in the name of the Defendant, after first learning about this registration in the last week of October 2020 itself. However, the said proceedings were pending at the time of pronouncement of the present judgement. It was also alleged that the Defendant had adopted and started using the impugned mark dishonestly, fraudulently and out of positive greed with a view to take advantage of the Plaintiff’s well-established goodwill, reputation and proprietary rights in the POLO formative marks.

The Defendant in its written statement and reply took the defence that the Plaintiff’s mark was not registered in class 21 which covered the goods in which it was engaged, and that the Plaintiff only had registration for its “POLO” marks in class 25, which was not conflicting in nature. Further, the word mark “POLO” was not registered by the Plaintiff in India and the label marks registered by the Plaintiff were dissimilar to the ‘POLO LIFETIME’ (marks/labels) being used by the Defendant. It was also stated by the Defendant that the Plaintiff had failed to establish its sales under/use of the "POLO" formative marks in India before the adoption and use of the POLO LIFETIME marks/labels of the Defendant. It was further argued that more than a hundred persons in India were using the trademark POLO and the Plaintiff's trademark was declared well-known by the Delhi High Court after the Plaintiff started using the trademark and thus that judgement did not apply to the present case. Both the parties, respectively, relied upon various landmark judgements in support of their case.

The court held and observed with regard to the issue of passing off that in most of the Plaintiff’s trademarks, besides the word element POLO, the name “Ralph Lauren” was also used beside a device of a polo player on a horse. Whereas the Defendant used the mark/label ‘POLO LIFETIME’ where except for the word POLO there was no similarity between the Plaintiff’s trademark and the Defendant’s trademark. Further, it was held that the lines of businesses, goods and services of both parties were significantly different. Moreover, the Plaintiff had failed to show, substantiate, and assert as to when it started its business in India. However, through the documents filed by the Plaintiff, it was noted that it entered into an agreement in 2018 with Aditya Birla Group to enter the Indian market. Whereas the Defendant was found to be selling goods with the trademark POLO since 2005 in India, as per the documentary evidence (invoices) filed by it. The commencement of use of the impugned mark(s) by the Defendant was thus observed to be before 2018. The court in this case did not find the Plaintiff to be able to establish the balance of convenience in its favour or a prima facie case against the Defendant as it failed to show prior use of its marks in India and that irreparable injury or loss would be caused to the Plaintiff. The court noted that such loss, injury or inconvenience, if any, would rather be caused to the Defendant as an injunction at this stage would amount to shutting down of its business even though Defendant was the registered owner of the trademark/label ‘POLO LIFETIME’ and the said registration had still not been cancelled. Further, it was held that the Defendant’s mark had a predominant suffix LIFETIME whereas Plaintiff’s marks had suffixes/prefixes including ‘Ralph Lauren’ & picture of a polo player, resulting in distinguishable trademarks. Thus, the court vacated the ex-parte interim injunction that was earlier granted to the Plaintiff on November 26, 2020, by another judge. It was held that the Plaintiff had prima facie failed to establish that the Defendant was infringing the Plaintiff’s trademark or passing off its goods as the goods of the Plaintiff.



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