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This article is written by Deena Nawab pursuing a Certificate Course in Trademark Licensing, Prosecution and Litigation from Lawsikho. 

Introduction

Hasn’t there always been a craze for fashion through the evolution of clothing in the fashion industry with likeness and eyes fixed towards Gucci, Prada, FabIndia  Raymond, US polo Assn., Peter England, Zara, H&M, Soch and the list never-ending. 

Let’s take a moment to realize what the impact would be if there was no relevance of trademarks in the fashion industry. There would be multiple parties starting and creating branches of these well-known brands mentioned above. The infringing party’s inability to deal with the market demands causes an increase in defamation and loss of revenue to the real proprietor. Hence, a low-quality product by the use of inferior fabric material is manufactured.  

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Coming to the point, in this article, I will be discussing the US POLO Assn. and POLO Ralph Lauren. There has been a matter of confusion between these 2 brands which are in regards to the logo and fashion industry. Polo is a traditional sports game, played on horseback between two teams, each team consisting of four players. The players use mallets with flexible and long handles aiming to drive a wooden ball down a grass field and between two goalposts. This game is either played on an arena or a field with rules varying slightly for each game. 

History of U.S. Polo Assn. and Polo Ralph Lauren

Alexander the Great, had known the game named Polo, proving this to be the oldest organized Sport. The Father of American Polo, James Gordon Bennet (May 10, 1841- May 1918) had first observed the game in  England. He had arranged players, shared knowledge, equipment and Texas horses for the first loosely structured match in the United States. Due to its old age relevance, there was a desire to create a brand that would serve the true spirit of the game Polo and for this, the U.S POLO ASSN. was created in 1981. 

The Polo Association was commonly and originally known as the United States Polo Association (USPA). The USPA holds responsibilities to coordinate games and standardize rules for the teams to be evened. During the World War era, the USPA had tried its maximum to include military players of about 1,200 and were supposed to participate in Polo to improve riding ability. 

The U.S polo assn. has been ranked as the fifth largest sports licensor and marking its impression in 180 countries and outlets with over 1,100 retail stores worldwide.  Arvind Mills Ltd, in India (Arvind Lifestyle Brands)   and U.S Polo Assn. entered into a licensing agreement, for the distribution of the U.S Polo brand across India. The commercialization of Polo was initiated by the production of T-shirts for men, turning more eyeballs towards the sport Polo. Manufacturing apparels, watches, shoes, leather goods, eyewear and accessories everything of high quality. To meet the satisfaction of the consumers, spreading their identity worldwide.

Whereas Ralph Lauren initially did not expand his business to fashion directly, he started on a smaller note. Working out in the Empire State Building in New York City, selling ties under the manufacturer named Beau Brummell. In due course, for the love he had towards the game of Polo, Ralph Lauren within a span of 2 years spread out a line of menswear named POLO. His brand was highly reputed amongst the civilians. Through his fame, he set up the first freestanding store as an American Designer, on Rodeo Drive in classy Beverly Hills.

Plenty of fashion houses are created based upon the personality of the founders. The criticality of individual style along with the personality of the designers results in unique designs and patterns. This helps the creators to sustain the brand strategy for fashion brands.

Such influence was found by Ralph Lauren also. This goes back to Ralph Lauren’s brother, Jerry Lauren who was the head of the menswear division and enthusiast for the collection of Steiff stuffed Bears, back in 1990. During this period, a tradition was brought up which had made the colleagues present a Steiff Bear. Dressed in a preppy style similar to how Jerry Lauren had dressed up at that time, this bear was given to both Jerry Lauren and Ralph Lauren created in their version. This Preppy Bear was presented as a design icon, appearing on the Brand’s product for it being a brand mascot. One must be aware of the movie ‘The Great Gatsby’, a classic novel masterpiece in 1974, Ralph Lauren had dressed every character for this hit movie.

The statistics from March 27, 2021 show that Polo Ralph Lauren had a total of 151 stores across the world.

Dispute and decision on fragrance products

The battle had begun back in the mid-80s. Polo and Ralph Lauren had always been put up on a face of confusion with regards to their similar logos and sporty garments. Stating out the history it must have been clear that these brands aren’t related at all. In fact, U.S. Polo Association was a sport before it became a brand as it has been showcased on today’s date. 

Ralph Lauren had manufactured and sold a number of branded PRL’s perfumes for many years. USPA had been expanding to such an extent covering wide aspects of the fashion industry and one such aspect was producing and selling men’s fragrances. A dispute arose in 1984, where a suit of infringement was filed by Ralph Lauren. PRL had contended that the use of men’s fragrance and double horse marks on the bottle had caused trademark infringement, unfair competition, dilution and common law violation. The court had determined all the factors in this case carefully since trademark infringement cases are extremely intensive.

The court had held that the use of the double horse mark as logo and its wordmark has created a strong likelihood of confusion to the public. As it is deceptively similar and holding USPA guilty of unfair competition. Passing a permanent injunction against USPA on the use of fragrance products and anything similar to it. The USPA was allowed to use the trademark on apparel, leather goods and watches but restricted it from the use of fragrances and beauty products. This judgment is tied back to 1984 by the District Court in New York, setting up a limitation on  US Polo Assn. to expand its area of products in the fashion industry. 

The period between 1984-2006 had encountered disputes and orders which had obliged the USPA from infringing RPL’s mark. Injunctions were passed against USPA by the district court banning  from using the Double Horsemen logo, the words ‘U.S POLO ASSN.’ OR ‘USPA’ OR ‘POLO’  in connection to fragrance.  

The USPA, in the period 2009-2012 had sold sunglasses with Double Horsemen Mark as the logo on it and sold nearly one million pairs. PRL had moved to Court in August 2012, stating that USPA had infringed the injunction passed in 1984. Alongside, the fragrance injunction by the use of Logo on sunglasses. The Court had avoided getting into the market analysis of whether the use of the Double Horsemen Mark on the sunglasses had infringed PRL’s market use. Thus, passing an award to PRL with relief for “future profits of any sales of eyewear containing the Double Horsemen Mark, sixty days subsequent to the court’s order.”  U.S. Polo Ass’n v. PRL USA Holdings, Case Nos. 13-1038, -1130.

The decision by the second U.S. Court of Appeal

In the appeal brought by the USPA, the Second U.S Court of Appeals in Manhattan had not ruled anything against the district court’s ruling. That is, from restricting USPA to avoid using the logo on fragrance products. However, stated it to be wrong to presume that since there is a ban on using the double horsemen logo on fragrance products. This had also disabled them from not using the said trademark on clothing and other ranging products. However, the Court stated that there is no close relation between fragrance and eyewear, compared to eyewear and apparels. Further stating, a market by market analysis is mandatory to prove that there has been confusion between the brands and to hold USPA liable for the infringement committed. But the District Court failed to perform the market analysis.

USPA was referred to as a “repeat infringer” by PRL, questioning the validity and authenticity of USPA over and over again. This argument was rejected by Kyle C.Bisceglie, the Attorney of Polo Ass. Stating Polo Assn. stating this is only a way adopted by PRL to avoid Polo. Assn. From marketing the authenticity that is provided to the US Polo products, the 2nd Court of Appeal had ruled in favour of USPA.

Conclusion 

This case was a matter of long rivalry between USPA and PRL. By the observance of this case law, a trademark owner has been given a scope for its trademark protection on goods manufactured and distributed. The word ‘POLO’ had originated from sports, both the founders had used this name to showcase their love for POLO. At the same time, neither of these brands were restricted from expanding their business across the globe. The reason being, the word POLO was used in innovative ways to sell and manufacture products by PLR for fashion and clothing. Whereas U.S Polo Assn. had manufactured sportswear, men’s wear and products significant in the apparel industry. But, the U.S Polo Assn. was restricted to step onto the products which would attempt to infringe the goodwill PRL had created over years. Most importantly for a trademark to be opposed, a trademark must be taken wholly into consideration rather than only a part of it. It must be visually different wholly, whether it’s in the form of a device mark or wordmark increasing the scopes of the parties. While taking into consideration the Double Horsemen mark shaded blue with words U.S Polo Assn. as a logo. To that of Polo Ralph Lauren, with a single horsemen logo shaded black and the words POLO Ralph Lauren as the logo. One can easily conclude that there is no likelihood of confusion between these two icons.  

Reference

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