The Polo/Lauren Company L.P. v United States Polo Association

• Jurisdiction: Singapore
• Judge: Choo Han Teck JC
• Judgment Date: 18 January 2002
• Neutral Citation: [2002] SGHC 10
• Docket Number: Originating Motions Nos 600025 (Notices of Motion Nos 600110, 600131 and 600144 of 2001) and 600026 of 2001 (Notices of Motion Nos 600132 and 600145 of 2001)
• Date: 18 January 2002
• Year: 2002
• Published date: 19 September 2003
• Plaintiff Counsel: Sukumar Karuppiah, Deborah Menon and Vicki Heng (Ella Cheong & G Mirandah)
• Citation: [2002] SGHC 10
• Defendant Counsel: Chow Kin Wah and Pearleen Loh (Alban Tay Mahtani & De Silva)
• Court: High Court (Singapore)
• Subject Matter: Trade Marks and Trade Names,Application to set aside,ss 15 & 23 Trade Marks Act (Cap 332, 1992 Ed),Considerations in determining whether mark will cause confusion,Registration,Likelihood of deception or confusion,Distinction between the two marks

Judgment

GROUNDS OF DECISION

1. The two Originating Motions were applications by the opponent to set aside the registration of the applicant's marks. The opponent is the registered owner of a trademark polo player and is a well known company producing various products, notably, fragrances and clothing, all of which carry their trademark polo player on horseback, and sometimes in combination with the words "Ralph Lauren" or "Polo Ralph Lauren". The applicant is the United States Polo Association which had ventured into consumer products such as luggage and clothing. It is the sole governing body of the sport of polo in North America (including Canada). It applied under Class 18 and Class 25 of the Trade Marks Act, 1992, Ch 332 to register its mark which also depicts a polo player on horseback. The main differences in the two marks are, first, the polo player on the opponent's mark appears with his polo club on the upswing, whereas the applicant's mark shows the player with his polo club on the low swing. Secondly, the applicant's mark has the letters "USPA" beneath the mark. The opponent's logo is just a motif without lettering. The Assistant Registrar of Trademarks allowed the applications and the opponent applied by these Originating Motions to set aside the registrations.

2. There is no dispute that the governing statutory provisions are ss 15 and 23 of the 1992 Act which provide as follows:

"15. (1) It shall not be lawful to register as a trademark or part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be entitled to protection in a court of justice, or would be contrary to law or morality, or any scandalous design.

…

"23. (1) Except as provided by section 25, no trade mark shall be registered in respect of any goods or description of goods that is identical with or nearly resembles a trade mark belonging to a different proprietor and already on the register in respect -

(a) the same goods;

(b) the same description of goods; or

(c) services or a description of goods which are associated with those goods or goods of that description."

3. I have taken the liberty of marking in italic form the portions of the statutory provisions above which Mr. Karuppiah, counsel for the opponent, relied upon in this appeal. Counsel also referred to various case-law authorities governing the registration of such marks. Many of these authorities had been the reference points in the decision of the assistant registrar. Mr. Chow, counsel for the applicant also does not quarrel with the authorities relied upon by Mr. Karuppiah and the assistant registrar; so it seems that the law is sufficiently clear. The contention of Mr. Karuppiah was chiefly on what he submitted to be an erroneous application of those principles. From the judgment of Lord Upjohn in Bali TM [1969] RPC 472, 496 the following general principles were favourably received in the House of Lords. First, citing Morton J in Hack's Trade Mark (1940) 58 RPC 91, that "the question whether a particular mark is calculated to deceive or cause confusion is not the same as the question whether the use of the mark will lead to passing off". Secondly, citing Evershed J in Jellinek's Trade Mark (1946) 63 RPC 59, that it was "sufficient if the result of the registration of the trade mark will be that a substantial number of persons will be caused to wonder whether it might not be the case the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt". Evershed J continued with the important words, "the court has to be satisfied not merely that there is a possibility of confusion: it must be satisfied that there is a real tangible danger of confusion if the mark which it sought to register is put on the register". Thirdly, accepting that the application of the test was "necessarily a question of fact and degree in every case". In that case, the House of Lords agreed with the decision of the registrar and the High Court that the registration of the "BALI" mark by an American brassiere company was likely to cause confusion among the public with another brassiere name, "Berlei" on the ground that "phonetically there is a likelihood of deception or confusion".

4. The basic principle, enunciated in Kellogg Co v Pacific Food Product Sdn Bhd [1999] 2 SLR 651, 660 states that the "comparison of the earlier and proposed marks must be assessed taking into account the actual way and manner that the marks are used, and surrounding circumstances such as the similarities between marks and goods on which they are applied". Thus, one well-known textbook authority had this to say (and the passage which I am about to set out was specifically relied upon by the assistant registrar below, but which Mr. Karuppiah says was wrongly applied by her). This is a passage from the 12^th edition of Kerly's Law Of Trade Marks And Trade Names, 17-08:

"Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus, for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that person s dealing with trade-marked goods, and relying, as they recently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in details might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own."

5. Mr. Karuppiah submitted that the assistant registrar erred in applying the law to the facts, and one of his grounds was that the assistant registrar's reliance on Australian Law Of Trade Marks And Passing Off by D.R. Shanahan was wrong. The relevant passage states:

"Where a trade mark combines a device with a word, customers will more naturally refer to the word when ordering the product. Thus similarities...