Polo/Lauren Co LP v United States Polo Association [2016] SGHC 32
Significance: Singapore High Court holds that US Polo Association’s trade mark is not so similar to Polo Lauren’s trade mark.
Brief Facts: the plaintiff filed its Notice of Opposition to the defendant’s application to register its trade mark (the Application Mark) on the basis of Section 8(2)(b) of the Trade Marks Act, i.e. the plaintiff alleged 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.
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”): at [5].
Similarity of Marks
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)]: at [9].
The principles for analysing the similarity of marks are laid out 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]:
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. …
The court must ultimately conclude whether the marks, when observed in their totality, are similar rather than dissimilar. It is not a checkbox exercise.
There is no prescribed requirement that all three aspects of similarity must be made out before the marks can be found to be similar … they are signposts towards answering the question of whether the marks are similar. Tradeoffs
can occur between the three aspects of similarity in the marks-similarity inquiry ….
The assessment of marks similarity is mark-for-mark without consideration of any external matter … This means that at the marks similarity stage this even extends to not considering the relative weight and importance of each aspect of similarity having regard to the goods. such considerations are properly reserved for the confusion stage of the inquiry, because that is when the court is called upon to assess the effect of objective similarity between the marks, on the perception of consumers.
Visual Similarity
What the Court is concerned with at this stage is technical distinctiveness, ie, the capacity of the mark to function as a badge of origin, not distinctiveness in the ordinary and non-technical sense in determining the dominant component of the Application Mark, i.e. what is outstanding and memorable about the mark: at [14].
The Court did not find the distinction which the plaintiff drew between invented words and acronyms, for which no authority was cited in support, persuasive. The Court observed that there was no reason why an invented word would have a greater capacity to function as a badge of origin as opposed to an acronym, particularly where both are pronounceable and have no inherent meaning: at [15].
The Court therefore held that there were no dominant components in the Application Mark.
The test for visual similarity is not one of substantial reproduction. Rather, visual similarity is assessed by reference to the overall impressions created by the mark or signs, bearing in mind their distinctive and dominant components: Hai Tong at [62].
Even if the Court was to accept the plaintiff’s submission that the Application Device is highly similar to the Opposition Mark the Application Text would in any event diminish the overall resemblance between them: at [17]. The prominence and inherent distinctiveness of the Application Text do significantly reduce the visual similarity between the marks: at [18].
Aural Similarity
The Court disagreed with the first instance Adjudicator’s consideration that the public would likely verbalise the Opposition Mark as “Polo Ralph Lauren mark” given that it was often used in conjunction with the words “POLO RALPH LAUREN”. This is because the mark similarity inquiry does not take into account external factors: Staywell at [20].
The Court observed at [20] that to find aural similarity where no aural component exists seems to allow for visual or conceptual similarity to be accounted for within the assessment of aural similarity.
In any case, the Court did not see any particular reason why the reasonable consumer would choose to pronounce the Application Mark as “polo-players” rather than as “USPA”, which while invented, is not unpronounceable: at [24].
Distinctiveness of Opposition Mark
Whether marks are similar will oftentimes depend on the inherent or acquired distinctiveness of the mark for the goods for which it has been registered. Therefore, if the trade mark is highly distinctive, it follows that a sign which has been substantially modified may possibly still be regarded as similar. For such trade marks, then, there is a high threshold to be met in creating a sign or a mark sufficiently dissimilar to it: Sarika Connoisseur Cafe Pte Ltd v Ferrero SpA [2013] 1 SLR 531 (CA) (“Sarika”) at [36]. That the distinctiveness of a registered trade mark is not another aspect of, or an element in, the determination of similarity. Rather, it is “a factor to be considered in the visual, aural and conceptual analysis to determine whether the allegedly infringing sign and the trade mark are similar”: Sarika at [20].
The Court was not persuaded by the defendant’s argument that the Opposition Mark has a lower level of distinctiveness. The Court found that there was insufficient evidence to demonstrate this. The mere fact that there are other registered trade marks comprising a polo player on horse-back is not necessarily indicative of the distinctiveness of the mark: at [36].
In sum, the Court found that the marks are similar on the whole, but only to a low degree: at [39].
Likelihood of Confusion
The principles on this issue summarised at [40] are:-
(a) The confusion inquiry in Section 8(2)(b) must take into account the actual and notional fair uses to which the registered proprietor of the earlier trade mark has or might fairly put his registered trade mark and compare this against any actual and notional fair use to which the trade mark applicant may put his mark should registration be granted: Staywell at [60].
(b) The only relevant type of confusion, for the purposes of Section 8(2)(b), is that which is brought about by the similarity between the competing marks and the similarity between the goods and services in relation to which the marks are used: Staywell at [15].
(c) Factors relating to the impact of marks-similarity on consumer perception include the following:
(i) The degree of similarity between the marks. The greater the similarity between the marks, the greater the likelihood of confusion, and vice versa: Staywell at [96(a)]. Further, it is possible to give more weight to the degree of similarity in a particular aspect (viz. visual, aural or conceptual) of the mark. For example, if the goods are normally sold based on the consumer’s direct perception, the visual aspect of the mark would be more mportant than the aural or conceptual aspects of the mark: Staywell at [20].
(ii) The reputation of the marks. A strong reputation can but does not necessarily equate to a higher likelihood of confusion: Staywell at [96(a)].
(d) Factors relating to the impact of goods-similarity on consumer perception include the following:
(i) The normal price of goods. Where the goods are expensive items, the average consumer is likely to pay greater attention and care when buying such goods and
this affects his ability to detect subtle differences: Staywell at [96(b)].
(ii) The nature of the goods. For example, where the nature of the goods is such that specialist knowledge is required in making the purchase, the average consumer is also likely to pay greater attention and care when buying such goods: Staywell at [96(b)].
(iii) The frequency and typical mode of purchase of the goods. For example, the consumer is likely to pay greater attention when the purchase transaction is infrequent (compared with routine purchases): Staywell at [94].
(e) It is not permissible to consider factors which are external to the marks and to the goods in question, and which are susceptible to changes that can be made by a trader from time to time, such as price differentials between the parties’ goods: Staywell at [95].
On the facts, the Court rejected the plaintiff’s argument that a lower degree of care is exercised in respect of the type of goods involved, i.e. eyewear, sunglasses, etc. Eyewear is not purchased on a regular basis. This type of goods is highly personal and is not something that would be purchased in a hurry but rather, would involve a high level of attention being paid by the consumer. The care exercised would not be restricted only to the lenses and the nose pad; given that the eyewear is likely to be purchased on a myriad of factors including not just comfort but also its appearance, any purchase would likely entail a detailed visual inspection of the eyewear: at [43].