Polo/Lauren Co LP v United States Polo Association

• Jurisdiction: Singapore
• Judge: Lee Seiu Kin J
• Judgment Date: 08 March 2016
• Neutral Citation: [2016] SGHC 32
• Plaintiff Counsel: Sukumar s/o Karuppiah and Jaswin Kaur Khosa (Ravindran Associates)
• Docket Number: Tribunal Appeal No 13 of 2015
• Date: 08 March 2016
• Hearing Date: 30 November 2015
• Subject Matter: Trade Marks and Trade Names,Grounds for refusal of registration
• Published date: 17 August 2016
• Citation: [2016] SGHC 32
• Defendant Counsel: Prithipal Singh and Chow Jian Hong (Mirandah Law LLP)
• Court: High Court (Singapore)
• Year: 2016

Lee Seiu Kin J: Introduction

This is an appeal against the decision of the adjudicator (“the Adjudicator”) in The Polo/Lauren Company, L.P. v United States Polo Association [2015] SGIPOS 10 (“the IPOS Decision”), in which the Adjudicator dismissed the plaintiff’s opposition to the registration of the defendant’s trade mark. As noted at [12] of the IPOS Decision, this is not the first time the parties have crossed swords; in Polo/Lauren Co LP v United States Polo Association and another action [2002] 1 SLR(R) 129 (“Polo/Lauren 2002”), the plaintiff unsuccessfully applied to set aside the defendant’s registration of its trademark.

Background

The plaintiff is the registered proprietor of a family of trade marks which comprise a single polo player in action (“the Polo Player Device”) used either on its own or in conjunction with other words.¹ These trade marks are registered in a number of countries around the world for a variety of goods and services.² Of particular significance is Singapore Trade Mark No T9604857H (“the Opposition Mark”) which the plaintiffs registered in Class 9 for “[s]pectacles, spectacle frames, lenses, sunglasses and parts and fittings therefor”:³

The defendant is the governing body of the sport of polo in the United States and has been so since the 1890s.⁴ It has nonetheless ventured outside its origins as a sports association into the sale of consumer products such as eyewear, luggage and clothing. On 17 October 2012, the defendant applied to register Trade Mark Application No T1215440A (“the Application Mark”) in Class 9 for “[e]yewear; ophthalmic eyewear frames; reading glasses; sunglasses; eyeglass cases and covers; sunvisors (eyewear)”.⁵ The Application Mark comprises a graphical representation of two overlapping polo players on horseback in a linear perspective (“the Application Device”). The polo players appear to be in motion, with the front player raising his mallet. The Application Device lies next to the text “USPA” (“the Application Text”):

The defendant’s application to register the Application Mark was accepted and published in the Trade Marks Journal on 30 November 2012. On 29 January 2013, the plaintiff filed its Notice of Opposition to the defendant’s application. The plaintiff cited four grounds in the Notice of Opposition but ultimately proceeded on two before the Adjudicator – (a) that the Application Mark had been applied in bad faith under s 7(6) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the TMA”); and (b) that the Application Mark was similar to the Opposition Mark and was to be registered for goods or services identical with or similar to those for which the Opposition Mark is protected, and there existed a likelihood of confusion on the part of the public under s 8(2)(b) of the TMA. The plaintiff did not appeal against the Adjudicator’s decision in respect of the former. Therefore I shall deal only with the second ground of objection. Section 8(2)(b) of the TMA reads:

(2) A trade mark shall not be registered if because —

… (b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public.

There was no dispute that the Opposition Mark, which was applied for on 14 May 1996,⁶ is an “earlier trade mark” under s 8(2)(b) of the TMA. The Adjudicator held that there was “only an extremely low degree of visual similarity between the two marks in this case” and no aural similarity between the Application Mark and the Opposition Mark.⁷ Nevertheless, she found the marks to be conceptually identical and on the whole, she was of the view the marks were similar, albeit to a very small degree.⁸ She also found identity between all the goods of the parties.⁹ Because of the low degree of similarity between the marks and the nature of the goods, which in the Adjudicator’s view would involve a higher degree of care being exercised in their purchase, she found that there was no likelihood of confusion under s 8(2)(b) of the TMA and accordingly dismissed that ground of the plaintiff’s opposition. This forms the sole basis for the plaintiff’s appeal before me. As the defendant does not contest the identity of goods,¹⁰ I need only consider the similarity of the marks and the likelihood of confusion on the part of the public.

Threshold for appellate intervention

A preliminary issue that falls to be determined is the role of an appellate court in proceedings of this nature. The defendant submits that the IPOS Decision should not be disturbed unless there has been a “material error of principle”.¹¹ It relies on Future Enterprises Pte Ltd v McDonald’s Corp [2007] 2 SLR(R) 845 (“Future Enterprises”) at [5], where the Court of Appeal cited the following holding of Laddie J in SC Prodal 94 SRL v Spirits International NV [2003] EWHC 2756 (Ch) at [19]:

It is not the duty of this court to overturn a decision of the Trade Mark Registry simply because it comes to the conclusion that it might have decided the case differently had it, that is to say the High Court, been the court of first instance. It has to be demonstrated that the decision at first instance was wrong in a material way; that is to say there must be some significant departure from a proper assessment of the law or the facts. [emphasis added]

The Court of Appeal in Future Enterprises therefore held at [7] that due to the highly subjective nature of the assessment required in s 8(b) of the TMA, “an appellate court should not disturb the findings of fact of a trade mark tribunal unless there is a material error of principle”, an approach which the plaintiff conceded in its oral submissions to apply in the present case. Nevertheless, as I had observed in MediaCorp News Pte Ltd v Astro All Asia Networks plc [2009] 4 SLR(R) 496 (“MediaCorp”) at [26] and [27], the Court of Appeal in Future Enterprises did not appear to have considered the effect of O 87 r 4(2) of the Rules of Court (Cap 322, R 5, 2014 Rev Ed) (“ROC”):

26 … The Court of Appeal in Future Enterprises did not appear to have considered the effect of this provision. Nevertheless, the fact that such proceedings are “by way of rehearing” [as stated in O 87 r 4(2) of the ROC] does not necessarily mean that the appeal court’s decision is unfettered. An appeal from the High Court to the Court of Appeal is similarly by way of rehearing under O 57 r 3(1) of the ROC. However, the Court of Appeal will be slow to upset an exercise of discretion by the trial judge (Golden Shore Transportation Pte Ltd v UCO Bank [2004] 1 SLR(R) 6 at [44]). Further, with respect to finding of facts, the Court of Appeal is generally reluctant to interfere because the trial judge is in a better position to assess the veracity and credibility of the witnesses (Seah Ting Soon v Indonesian Tractors Co Pte Ltd [2001] 1 SLR(R) 53 at [22]). On the other hand, a distinction is drawn between perception of facts and evaluation of facts, the latter of which an appellate court is in as good a position as the trial court to make an evaluation from primary facts (Ho Soo Fong v Standard Chartered Bank [2007] 2 SLR(R) 181 at [20]). However the authorities are clear that the law pertaining to trade mark infringement is unique in that the final analysis is “more a matter of feel than science” (Future Enterprises at [7]).

Similar observations were made by Chan Seng Onn J in Valentino Globe BV v Pacific Rim Industries Inc [2009] 4 SLR(R) 577 at [9]–[11]. While his decision was upheld on appeal, neither Future Enterprises nor MediaCorp was discussed. Regardless, as was the case in MediaCorp, it does not make a difference as to whether the appeal is to be by way of rehearing given the findings I made below.

Similarity of marks

It is trite that the assessment of the similarity between marks is directed towards substantive similarity, and comprises of three aspects – visual, aural and conceptual similarities: Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal [2013] 2 SLR 941 (“Hai Tong”) at [40(a)]. The broad principles that guide the court in assessing the likelihood of confusion arising out of the similarity between competing marks and the parties’ services were laid down by the Court of Appeal in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal [2014] 1 SLR 911 (“Staywell”) at [15]–[20]: 15 … Under the step-by-step approach, the three requirements of similarity of marks, similarity of goods or services, and likelihood of confusion arising from the two similarities, are assessed systematically. The first two elements are assessed individually before the final element which is assessed in the round. …

…

17 … The court must ultimately conclude whether the marks, when observed in their totality, are similar rather than dissimilar. The three aspects of similarity are meant to guide the court’s inquiry but it is not helpful to convert this into a checkbox exercise in which a tick, however faint it might be, in any one box must compel the court to find that the marks are similar when a sensible appraisal of the marks as a whole would show otherwise. 18 … Congruously, there is no prescribed requirement that all three aspects of similarity must be made out before the marks can be found to be similar … In short, the criteria of visual, aural and conceptual similarities do not invite a formulaic consideration; rather, they are signposts towards answering the question of whether the marks are similar. Trade-offs can occur between the three aspects of similarity in the marks-similarity inquiry …. 19 … A productive and appropriate application of the step-by-step approach necessitates that the court reach a meaningful conclusion at each stage of the inquiry. 20 ...