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INTELLECTUAL PROPERTY APPELLATE BOARD=the word polo is a dictionary word meaning a game of eastern origin with rules similar to hokey played on horse back with a long handled mallet and polo shirt meaning a casual short sleeved cotton shirt with a collar and several buttons at the neck. As such the claim of the appellant for proprietary right over the word POLO is untenable in the eyes of law and incapable of getting a well-known mark status as per the plethora of cases.

Polo/Lauren Company, L.P. v. Royal Classic Mills

Polo Ralph Lauren

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Private Limited – ORA/118/2007/TM/CH [2008] INIPAB 1 (19 March 2008)

INTELLECTUAL PROPERTY APPELLATE BOARD

Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai,

Teynampet, Chennai-600018

M.P.Nos.102 & 103/2007 in OA/44/2006/TM/CH

And

OA/44/2006/TM/CH

WEDNESDAY, THIS THE 19TH DAY OF MARCH, 2008

Hon’ble Shri Z. S. Negi Vice-Chairman

Hon’ble Shri Syed Obaidur Rahaman Technical Member

Polo/Lauren Company, L.P. Appellant

a limited partnership organized and existing under the laws

of the State of New York, United States of America

of 650, Madison Avenue, New York,

New York 10022, United States of America.

Address for Service in India:

Remfry & Sagar,

Remfry House at the Millennium Plaza,

Sector 27, Gurgaon-122 002, NCR.

(By Senior Advocate Shri R. Gandhi and Advocate Shri G. K. Muthukumar)

Vs.

1.Royal Classic Mills Private Limited,

No. 31, Puliyamara Thottam,

Mangalam Road, Tirupur-641 604.

Address for Service:

Surana & Surana International Attorneys,

International Law Centre,

224, N.S.C.Bose Road,

Chennai-600 041.

2. The Assistant Registrar of Trade Marks,

I.P.Building, G. S. T. Road,

Guindy, Chennai- 600 032.

Respondents

(By Senior Advocate Shri N.R.Chandran and Advocates Shri Deepak Vaid

& Ms. S. Nithya for R1)

ORDER(No.45/2008)

Hon’ble Shri Z. S. Negi, Vice-Chairman:

This is an appeal under section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) directed against the order dated 1. 6. 2006 passed by the Assistant Registrar of Trade Marks, Chennai whereby she has disallowed the opposition No. MAS-111156 and allowed the application No. 889702 to proceed for registration. The appellant has along with the appeal filed an application being M.P.No. 93/2006 for staying the operation of the impugned order till the disposal of the appeal and this Appellate Board by its order dated 5.3.2007 restrained the Registrar from issuing certificate of registration until further orders.

2. It is stated that the first respondent herein has filed an application No.889702 on 3.12.1999 for registration of trade mark ‘C&C CLASSIC POLO’ (label) in class 25 in respect of readymade garments and all kinds of hosiery goods for sale in the States of Tamil Nadu, Karnataka, Andhra Pradesh and Kerala. The trademark applied for was proposed to be used and the said application was advertised in the Trade Marks Journal No.1291 (Supplementary III) dated 28.3.2003 at page 267 with the condition that “Registration of this Trade Mark shall give no right to the exclusive use of the C&C and the word Classic”. In view of the disclaimer, the word POLO is the only prominent and distinguishing feature of the impugned mark. The appellant herein filed opposition being No MAS-111156 opposing the registration on the grounds that they have an established international business as manufacturers and merchants of high quality men’s, women’s and children’s clothing and variety of consumer merchandise marketed and sold under the well-known trade mark POLO world wide and in India including but not limited to POLO, POLO PLAYER SYMBOL, POLO SPORT, POLO JEANS, POLO BY RALPH LAUREN, etc.; that the mark POLO was designed, adopted and used by Ralph Lauren in 1967; that the appellant owns and uses a number of trade marks consisting of or containing POLO several of which are registered or pending registration in several classes in many countries of the world including India; that the trade mark POLO has been in use in India at least from June 1999 in relation to clothing items manufactured and exported from India to other countries which constitutes use of that trade mark in India for the purposes of the Act, therefore, others do not have any right to adopt the same as their trade mark; that it is a globally well-known mark of Ralph Lauren and would qualify for protection under Article 6 bis of the Paris Convention which has been adapted into sections 11 (2-10) of the Act; that the mark applied for registration by the applicant/first respondent is neither adapted to distinguish nor capable of distinguishing its goods; that the application of the first respondent for registration is on the basis of proposed to be used, therefore, subsequent use or goodwill cannot be considered in favour of the first respondent and in such circumstances the proposed registration would be contrary to the provisions of sections 9, 11 (a), (b) & (e) and 18 (1) of the Trade and Merchandise Marks Act, 1958.

3. On completion of the procedural requirements, the matter was set down for hearing and the impugned order was passed on 1.6.2006 after hearing both the parties. Aggrieved by the impugned order, the appellant has challenged the impugned order on various grounds, inter alia, that the determination as to distinctiveness of the mark under section 9(1)(a) and likelihood of deception and confusion/deceptive similarity under sections 9 (2) (a) and 11 of the Act are erroneous; that the findings given or observation made in the impugned order regarding non-use of the appellant’s mark in India is incorrect; that the first respondent has failed to prove its claim of ownership and entitlement to registration of the impugned mark; that the interpretation given in the impugned order to the concept of well-known mark is absolutely wrong and that the determination of proprietorship in favour of the first respondent under section 18 of the Act is wrong.

4. On 2.4.2007 the counter-statement along with list of enclosures was filed on behalf of the first respondent and thereafter the appellant on 20.7.2007 filed the reply to counter-statement along with an interlocutory petition being M.P.No.102/2007 for taking on record the Annexure A-1 to A-14 of the said petition. The first respondent has also on 5.9.2007 filed an interlocutory petition being No. 103/2007 for taking on record the affidavit of Mr. Shivaram along with the exhibits thereof. On the day of hearing, the interlocutory petitions were taken up first, when Shri R. Gandhi Senior Advocate raised objection that the first respondent has filed certain documents without supporting affidavit, whereupon Shri N.R. Chandran Senior Advocate undertook to file the desired affidavit within a week’s time. Ultimately, both learned senior counsel agreed that both the interlocutory petitions should be taken on record and accordingly both the interlocutory petitions were allowed and documents taken on record. Thereafter, the appeal was taken up for final arguments when both the parties have submitted their written arguments also.

5. At the outset, learned Senior Advocate Shri R. Gandhi, appearing for the appellant assailed the conclusion arrived at by the second respondent as to the distinctiveness or distinctive character of the impugned mark under section 9(1) (a) of the Act on various grounds. The grounds were mainly, inter alia, that the impugned mark was not capable of distinguishing the goods of the first respondent from that of the goods of the appellant specially when the impugned mark has no user prior to the making the application for registration to show acquisition of distinctive character. The application was made on the proposed to be used basis, therefore, as on the date of application the proposed mark had no distinctiveness, either inherent or acquired and the evidence relevant for taking into consideration should be the evidence as at the date of application not subsequent to the date of application as has erroneously been taken into account the subsequent evidence of the first respondent by the second respondent in the present case. Reliance in support of his argument was placed on the judicial pronouncement in the case of E. G. Hughes Ltd. v. Vick Chemical Co., AIR 1959 Cal. 654 wherein it was held that in case of all applications for registration of the trade marks, including opposed applications, the right of the parties are to be determined as at the date of the application for registration. That the second respondent has erroneously relied on the submission that the mark POLO is a common dictionary word for which exclusive proprietary right cannot be claimed by the appellant, without appreciating that the existence of appellant’s registration of the mark POLO in class 25 in diverse countries clearly establish the trade mark significance of POLO and the appellant’s exclusive proprietary right therein. That apart, many dictionary words /surnames/geographical names have been held to acquire great trade mark value and secondary meaning by virtue of use and publicity and reputation accrued there from. That the second respondent has allowed herself to be guided by extraneous submissions and materials, such as the plea that the mark POLO is generic word, which did not form part of the pleadings/counter-statement in Form TM-6. This plea of POLO being a generic word had suddenly been raised by the appellant at the time of hearing and such plea ought not to have been taken into consideration. The Apex Court has in its decision reported in [1963] INSC 100AIR 1964 SC 1680 at p. 1686[1964] INSC 269; , AIR 1965 SC 1167 and[1978] INSC 254AIR 1979 SC 621 at para 5 has held that a ground not specifically pleaded cannot be the subject of adjudication. He asserted that in the case on hand, the impugned order which was adjudicated on the new plea of POLO being a generic word in the absence of the specific plea contained in the counter-statement of the first respondent is bad in law which ought not to have been considered and further, if the word POLO is generic then the first respondent is also not entitled to claim exclusive right of registration, therefore, the application for registration should have been refused on this inconsistent and self defeating ground itself. It was also argued that it is an undisputed fact that there is a disclaimer for the right to the exclusive use of ‘C & C’ and the word ‘CLASSIC’- implying thereby that only essential and prominent feature left to be considered for registration was POLO- but this fact was totally overlooked by the second respondent.

6. Shri Gandhi submitted that the appellant is using the trade mark in India within the meaning of the expression ‘and any other act done in India’ employed in sub-section (1) of section 56 of the Act which means that if goods are manufactured in India for and on behalf of a trader outside India and the goods so manufactured are exported outside India on the request of such trader then that will constitute use under that sub-section. He pointed out that the documents filed by the appellant under Annexure A-4, A-6 and A-7 in M.P.No.102/2007, containing copies of bills, trade invoice raised on POLO garments manufactured by Indian licensee for export, samples manufactured by the Indian licensee, copies of invoices and other documents showing shipments of POLO products from India are proof of his submission and as such the appellant is entitled to the benefit of provision of sub-section (1) of section 56 of the Act.

7. Learned Senior counsel Shri Gandhi contended that the principle of law in the case of likelihood of confusion and deception is that the onus to prove that there is no likelihood of confusion is on the first respondent herein but the said respondent has failed to discharge the same. In support of his contention, the learned sr. counsel placed reliance upon the judgment in Raj Lakshmi Knitting Company v. Ascot (S&F) International Ltd. & Ors., 2007 (37) PTC 147 (IPAB), Cadila Health Care Ltd. V. Cadila Pharmaceuticals Ltd., 2001 PTC 300 (SC), N.R.Dongre v. Whirlpool Corporation, 1996 (16) PTC 476), Corn Products P. Ltd. v. Shagrila Food Products Ltd., AIR 1960 SC 142 and Parle Products P. Ltd. V. J.P.and Co. Mysore,[1972] INSC 30AIR 1972 SC 1359. He contended that since the world famous POLO brand owned by the appellant has created a land mark in the minds of the people in the garment sector throughout the world associating with the appellant only and none else, as such if the first respondent’s impugned trademark is used, the public will think that the brand comes from the house of appellant and thus it will cause confusion among the public. The High Court of Calcutta in the case of E. Griffiths Hughes Ltd. (supra) held at page 19 thus: ‘If however the proviso to sub-s.(3) is applicable to the case then the question whether the trade mark is adapted to distinguish or not become immaterial and the Registrar can direct registration solely on the evidence of acquired distinctiveness. In other words if the proviso is attracted then the “acquired distinctiveness” is conclusive and entitles the mark to be registered. But if the proviso does not apply then the “acquired distinctiveness” is not conclusive, and the Registrar has to find that adaptability to distinguish is present in the trademark proposed to be registered.’

8. Shri Gandhi submitted that POLO trademark of the appellant is well-known and enjoys transborder reputation since Ralph Lauren is widely recognised world over for excellence in creation of contemporary clothing designs and has in this field received several awards such as Coty Award for Menswear, Menswear Fashion Award, American Fashion Award, Coty Hall of Fame Award for Menswear, Council of Fashion Designs of America Designer of the Year Awards for both Menswear and Womenswear, GQ Manstyle Award, The Cutty Sark Men’s Fashion Award for Special Achievement, and The Council of Fashion Designers of America Lifetime Achievement Award. Due to extensive use worldwide, publicity globally and registration/protection in various countries for clothing, garment and allied goods and for other goods, the POLO has earned enormous reputation and goodwill as a mark of the appellant. Apart from several trade marks registration containing the word POLO, POLO word mark per se in India, the appellant has registrations in various countries for these marks. The word POLO forming a predominant feature is used as a trade mark, corporate name and as a trading style of the appellant. The goods of appellant bearing POLO mark have been widely advertised in the reputed magazines like Voge, Variety Fair, Esquire, Sports Illustrated, Rolling Stone, Time, Elle, Forbes and Newsweek. Placing his reliance heavily upon the decision in N.R. Dongre vs. Whirlpool Corporation, 1996 PTC (16) 476, the learned Senior Counsel submitted that in today’s world it cannot be said that a product and the trade mark under which it is sold abroad does not have reputation or goodwill in countries where it is not available as dissemination of knowledge about a trade mark in respect of product through advertisement in media amounts to use of trade mark whether or not such advertisement is coupled with the actual existence of product in the market. Learned counsel, relying upon the decision of Division Bench Of Calcutta High Court in J.N. Nichols (Vimto) Limited vs. Rose and Thistle & Anr., 1994 PTC 83, submitted that mere advertisement without having even the physical existence of the goods in the market can be said to be a use of the mark and this decision was relied upon by the High Court of Delhi in the case of N.R. Dongre (supra). He pointed out that Annexure A-1 to A-14 of the M.P. No. 102/ 2007 prove the global reputation and goodwill of POLO mark and the fact that of its being a well know mark of the appellant.

9. Countering the ground of argument of the first respondent that the word POLO is used by other traders like LEVIS, WRANGLER, etc. as shown in the documents filed as Annexure-B of the M.P. No.103/2007, the learned Senior counsel submitted that the applicant’s mark POLO is distinguishable on the grounds that those traders use the word in descriptive form and not in the trade sense as a trade mark, that they do not give prominence to word POLO and do not use it in their invoices, purchase bills or advertising on their trade mark, that they have not applied for registration so as to obtain exclusive right over POLO and the customers are unlikely to get influenced by the use of the word POLO by these traders as the circumstances under which they use it are different in a descriptive sense and not in a trade sense. Such argument will not provide any shelter to the first respondent. Regarding Annexure-D to the M.P. No.103/2007 of the first respondent, the learned senior counsel submitted that the appellant has been always vigilant and active in protecting its proprietary right in POLO. Pages 137 to 145 along with the Memorandum of Appeal are testimony to this which contains copy of interim injunction issued by the High Court of Delhi against the infringing of mark POLO. Similarly, Annexure-A to the written arguments contains the list of oppositions filed by the appellant against application for registration of the POLO mark. It was further submitted that in the first respondent’s application, other words having been disclaimed, POLO is the essential element with full emphasis thereon. The first respondent is trying to confuse this Appellate Board with the meaning of the word POLO and POLO SHIRT by making submission at para 3 of the written arguments that the Polo shirt means a casual short sleeved cotton shirt with a collar and several buttons at the neck.

10. Shri Gandhi contended that the adoption of mark by the first respondent was dishonest and malafide. The first respondent did not apply to the Registrar for conducting official search before making application for registration. It is not the case of first respondent either that it was not aware of the existence and in use of appellant’s mark POLO at the time of making its impugned application. Relying upon the decision of this Appellate Board inNeedle Industries (India) Ltd. V. Super Thread Industries & Ors., 2007 (34) PTC 614 (IPAB) and the High Court of Delhi in Cadbury India Limited & Ors. Vs. Neeraj Food Products, 2007 (35) PTC 95 (Del), learned counsel contended that the first respondent has not explained the reason or justification for the adoption of the mark POLO and in the absence of any explanation therefore the only inevitable conclusion is that the first respondent wanted to cash upon the goodwill and enormous reputation attached to the appellant’s mark. In support of the above contention he further relied upon the judgment of Division Bench of Madras High Court in Needle Industries (India) Ltd., Chennai v. Sanjay Jaiswal & Ors., 2002 (24) PTC 646.

11. Shri Gandhi submitted that the first respondent in para 2 of its written submissions stated that the appellant had failed to prove its claim of ownership of the POLO mark. The law is well settled that the onus of proof is on the applicant for registration (first respondent herein) to prove its claim of ownership and entitlement to the impugned mark. While this is so, the first respondent having failed to prove honest adoption and distinctiveness of the impugned mark cannot claim that the appellant has failed to prove ownership. Irrespective of this, the documents before the Registrar and the Appellate Board along with M.P.No.102/2007 in this appeal go to prove the appellant’s ownership to the mark and as such the first respondent’s submission to stated effect are only to divert the attention of the Appellate Board from the main issue to trivial issues.

12. Learned Senior counsel Shri Chandran appearing for the first respondent submitted that the appellant has failed to prove its claim of ownership of the mark POLO as all the proofs submitted by the appellant are the word POLO in combination with other words or device such as POLO PLAYER SYMBOL, POLO BY RALPH LAUREN, etc. which are absolutely insignificant to this case because when it is compared with the first respondent’s composite mark C&C CLASSIC POLO (label), including other features, is totally different by visually, phonetically, layout and getup.

13. Shri Chandran submitted that the word polo is a dictionary word meaning a game of eastern origin with rules similar to hokey played on horse back with a long handled mallet and polo shirt meaning a casual short sleeved cotton shirt with a collar and several buttons at the neck. As such the claim of the appellant for proprietary right over the word POLO is untenable in the eyes of law and incapable of getting a well-known mark status as per the plethora of cases. He further submitted that the appellant in its own submission at para 3(b) of the reply to M.P.No.103/2007 admitted that the word POLO is descriptive and generic term as to the specification of goods in class 25. The learned counsel after narrating the history of Polo T Shirts, submitted that the all prominent players in textile sector world wide manufacture their POLO Shirts that have gained popularity over the years as a formal casual wear and submitted that Lacoste, POLO HERZ, Wear Guard, Sports “R” Us, Passport International, Online Sports, Skate America, etc. are some of the prominent international companies in this range. Since all textile players produce POLO Shirts and the word denotes a particular category of garments in textiles, there is no doubt that the word POLO is a generic word. By referring to Mc Carthy on Trade Marks and Unfair Competition (3rd Edn. Vol.2) that “A generic name of a product can never function as a trademark to indicate origin. The terms ‘generic’ and ‘trademark’ are mutually exclusive. Thus if, in fact a given term is generic, it can never function as a mark to identify and distinguish the products of one seller”, the learned Sr. counsel submitted that in the present situation the appellant’s argument that it maintains monopoly over the use of the word POLO is unsustainable in law since POLO is undoubtedly a generic word. He submitted that it is worth referring that in Novartis AG vs. Wanbury, 121 (2005) DLT 316, the Delhi High Court has held that the generic word ‘MINIC’ was a part of the trade name of various drugs used as a suffix to other alphabets and an exclusive right could not be claimed over the word. Along the same lines the word POLO is also used in textile trade by many players and no one entity can claim an exclusive right over it. Learned counsel cited the judicial pronouncement in SBL Ltd. vs. Himalaya Drug Co., AIR 1998 Delhi 126, Astrazeneca UK Limited vs. Orchid Chemicals 2007 (34) PTC 469 (Del), Indo-Pharma Pharmaceutical Works Ltd. vs. Citadel Fine Pharmaceuticals Ltd., (1998) 3 MLJ 214, Asian Paints Limited vs. Home Solutions Retail (India) Limited, 2007 (35) PTC 697 (Bom), Rich Products Corporation and Anr. vs. Indo Nippon Foods Limited, MIPR 2007 (2) 316 and PEPSI-COLA Co. of CANADA, Ltd. vs. COCA-COLA Co. of CANADA, Ltd., (1940) S.C.R. 17 in support of his submissions. Reliance was also placed upon the decision of the Singapore Court of Appeal in The Polo/Lauren Co, LP vs. Shop In Department Stores Pte Ltd [2006] SGCA 14 where the Court, while dismissing the plaintiff’s claim of infringement and for breach of the undertaking, held that the POLO word mark was always used in conjunction with the other trade marks of the appellant, therefore, the Court felt that the distinctiveness of the mark was diminished and, the Court expressed its doubt that any average consumer will be confused.

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