The Singapore High Court has recently rejected an infringement claim made by the famous American fashion house, Polo/Lauren Company, LP (the plaintiff), against a local fashion retailer, Shop In Department Store Pte Ltd (the defendant).
In this case, the plaintiff alleged that the defendant had infringed its registered "POLO" trade marks by selling China-made T-shirts under the "POLO PACIFIC" mark, thereby causing confusion to its customers. The plaintiff further contended that the defendant had in so doing breached an undertaking signed in April 2003 in settlement of a dispute concerning its sale of counterfeit Polo Ralph Lauren goods in December 2002.
In deciding on the infringement claim, Justice Lai Kew Chai considered the following salient issues:-
- whether the defendant's sign is similar to the plaintiff's mark
- whether the sign was used in relation to goods similar or identical to the mark; and if so, whether there is a likelihood of confusion by reason of the similarity
Based on the evidence provided, Lai J. noted that the plaintiff's most distinctive marks were the Polo Ralph Lauren name and the polo player device. He further noted that the word mark "POLO" was always used in conjunction with the plaintiff’s other marks, and that none of the plaintiff’s advertisements used only the word "POLO".
Under such circumstances, Lai J. opined that the court was entitled to hold that the more distinctive and essential features distinguishing the plaintiff's goods were the device used or the other parts of the composite trade mark, rather than the word mark "POLO". Accordingly, the distinctiveness of the common feature "POLO" was diminished and the addition of another word or other matter could thereby render the challenged mark sufficiently dissimilar. Furthermore, the word "POLO" per se was not very distinctive given its use in everyday language to refer to the sport or a particular type of T-shirt.
On consideration and comparison of the respective marks of the parties, Lai J. held that they were neither visually nor aurally similar. Further, despite the use of the word "POLO" as the first word of their marks, he opined that this was not a case where the defendant's brand title would be abbreviated to become known as "POLO". It was also not a case where the marks would be mispronounced and mistaken for each other. In addition, it was noted that the marks conveyed rather distinct concepts: the defendant's mark conveyed images of the sand and the sea while the plaintiff's mark did not. The plaintiff's infringement claim therefore failed.
On the issue of the plaintiff’s customers being confused by the "POLO PACIFIC" mark, Lai J. opined that the average consumer in Singapore, being literate and educated, was unlikely to be easily deceived. Further, the plaintiff's goods were sold at exclusive stores in central locations and targeted the upper middle-class market and perhaps higher. The defendant, on the other hand, had stores located at less centrally located areas and the goods sold were much cheaper and targeted mainly at lower-income earners.
Given his ruling that infringement of the plaintiff's trade marks was not established, Lai J. decided that it was not necessary to consider the issue of breach of the earlier undertaking.
For the reasons summarized above, the plaintiff’s claims were dismissed with costs.
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