Polo/Lauren Company fails in application to invalidate use of 'confusingly similar' trademark

A man walks past Ralph Lauren Corp.'s flagship Polo store on Fifth Avenue in New York City.
A man walks past Ralph Lauren Corp.'s flagship Polo store on Fifth Avenue in New York City.PHOTO: REUTERS

SINGAPORE - A polo club founded in 1985 in the County of Berkshire, England, will be allowed to keep its trademark for its line of consumer goods, after an application to invalidate it by fashion brand Polo/Lauren Co was thrown out by the Intellectual Property Office of Singapore (Ipos).

In October 2011, Royal County of Berkshire Polo Club, which had ventured into producing consumer goods such as spectacles, leather goods and clothing, registered its trademark bearing the silhouetted image of a polo player and the phrases "Royal County of Berkshire" and "POLO CLUB".

The trademark had been used in places such as Malaysia and Britain, but had not yet been used in Singapore.

In December 2013, Polo/Lauren Co, a subsidiary of Ralph Lauren Corp, applied for the trademark to be declared invalid, on the grounds, among other things, that it is confusingly similar to its own earlier trademarks.

Polo/Lauren Co has some 51 marks registered in Singapore containing or consisting of the word "Polo" and/or a polo player image for different types of consumer goods.

Its argument was that the word "Polo" and the polo player image were essential to its trademarks and an indispensable component in its family of trademarks. Members of the public in Singapore have come to associate trademarks containing such features with Polo/Lauren Co and no other, it added.

Royal County of Berkshire Polo Club was represented by lawyer Janet Lim, while Polo/Lauren Co was represented by lawyer Sukumar Karuppiah.

In a judgment issued on Dec 14, Ipos' principal assistant registrar of trademarks Tan Mei Lin said that overall, there would not be a likelihood of confusion between the two companies' trade marks.

Based on evidence provided, Polo/Lauren Co's trademarks are typically used in conjunction with the highly distinctive words "Ralph Lauren", she said. She was also unable to conclude that consumers relied on the word "Polo" and the polo player image alone to identify the company's goods.

Among the points made, she also noted that this was not the first time that Polo/Lauren Co had attempted to stop a competitor from using such signs in the area of consumer goods.

In the past 12 years, at least six cases were heard on similar issues, with various outcomes.