IN THE battle between two "Polo" brand retailers, the United States Polo Association (USPA) has won its legal round against rival fashion brand Polo Ralph Lauren here.
The prize: It has been allowed to register a black-and-white trademark featuring two polo players on horseback.
The Intellectual Property Office of Singapore (Ipos), in a judgment paper obtained by The Straits Times, dismissed a bid by Ralph Lauren to block the USPA from registering it.
We are a polo association, we have to represent the sport. There are only so many ways you can depict a polo player.
- USPA's lawyer Prithipal Singh
Ralph Lauren claimed USPA's logo was similar to its own single-player trademark, which it registered in 1996.
The USPA - the sport's American governing body - has ventured into selling merchandise and registered the mark in 2012 with the intention to enter the eyewear market here.
However the fashion giant could still launch an appeal against the June 2 decision.
Polo Ralph Lauren's lawyer, Mr Sukumar Karuppiah from Ravindran Associates, who has 28 days to appeal, argued that the horsemen mark dominates the USPA's logo and should be given more weight when comparing the two trademarks for similarities.
He also pointed out that the single-polo player mark had, over years of extensive usage, developed an "acquired technical distinctiveness".
But the USPA's lawyer, Mr Prithipal Singh from Patrick Miranda LLP, argued that the organisation's initials were the "dominant component" of the logo and when it was compared against the single-polo player mark, "the dissimilarity is clear".
He also argued that the image depicting a polo player was not distinctive, as there are other such logos here - including that of Santa Barbara Polo & Racquet Club - registered for eyewear.
Intellectual property adjudicator Professor Ng-Loy Wee Loon, who heard the case, found the USPA's logo had to be viewed as a whole - with both its letters and image - as neither was dominant.
Comparing both logos in their entirety, she found that they had an "extremely low degree of visual similarity".
She also said Ralph Lauren had not been able to prove that its single-polo player mark had acquired a "badge of origin" reputation.
Referring to sales invoices tendered as evidence of sales in Singapore, she said not one of them featured the single-polo player logo on its own and added that many of the company's advertisements did not carry it either.
Polo Ralph Lauren's counsel could not confirm whether there will be an appeal as its clients are still reviewing the matter.
The USPA's Mr Singh told The Straits Times: "We are a polo association, we have to represent the sport. There are only so many ways you can depict a polo player. It is a fair judgment."
IP expert David Tan, a National University of Singapore entertainment law associate professor, agreed, saying: "The USPA, being a legitimate polo club, should be able to use the generic image of men on horses to sell apparel and other fashion merchandise, so long as the icon is not identical to Polo Ralph Lauren's mark."
Fitness trainer Chua Ping Wei, 31, said: "The logos look very different. If I was going to buy a branded item, I would check the brand properly."