The Appeal Board of the Japan Patent Office (JPO) affirmed Examiner’s refusal to register the wordmark “U.S. POLO ASSN.” due to similarity to and a likelihood of confusion with earlier registered mark “POLO” owned by The Polo/Lauren Company, L.P.
[Appeal case no. 2018-5222, Gazette issued date: July 31, 2020]
“U.S. POLO ASSN.”
United States POLO Association filed a trademark registration for wordmark “U.S. POLO ASSN.” in standard character on January 13, 2016, over various kinds of bags, leather products, and other goods in class 18. [TM application no. 2016-3277]
On January 12, 2018, the JPO Examiner rejected the applied mark in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law on the grounds that “U.S. POLO ASSN.” contains a term “POLO” which has become famous as a source indicator of The Polo/Lauren Company, L.P in connection with clothing and home décor. Relevant consumers with ordinary care would conceive the term as a prominent portion of the applied mark. If so, both marks shall be deemed similar or likely to cause confusion when used on the goods in question.
Article 4(1)(xi) is a provision to prohibit from registering a junior mark that is deemed identical with, or similar to, any senior registered mark.
Article 4(1)(xv) is a provision to prohibit any mark from being registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and users’ benefits.
U.S. POLO ASSN filed an appeal against Examiner’s refusal on April 16, 2018.
JPO admitted a high degree of reputation and popularity of “POLO” as a source indicator of The Polo/Lauren Company, L.P in connection with clothing as well as bags based on following fact-findings.
- American company Polo Ralph Lauren was founded in 1967 in New-York by fashion designer Ralph Lauren. The 1980s and 90s saw massive expansion for the Ralph Lauren brand and it became a worldwide phenomenon.
- “POLO” appears with definitions of ‘trademark of US designer, Ralph Lauren’ and ‘leather products designed by Ralph Lauren’ in some dictionaries which clearly demonstrate “POLO” is known as an abbreviation of ‘POLO RALPH LAUREN’.
- “POLO” has been substantially used adjacent to “RAPLH LAUREN” on various goods and frequently advertised as a famous brand of RALPH LAUREN in the media.
- A customer survey conducted in January 2010 from 900 adults age 20 years and older revealed that RALPH LAUREN has ranked 3rd-most popular brand in clothing after Burberry and UNIQLO.
- Annual sales exceed USD4,800 million in 2008, USD7,450 in 2013.
The Board found the applied mark “U.S. POLO ASSN.” shall be seen as a composite mark consisting of “U.S.”, “POLO” and “ASSN.” Since the last word “ASSN.” is too unfamiliar to average Japanese consumers to see it as an abbreviation of ‘association’, the applied mark would not give rise to any specific meaning as a whole. Besides, its pronunciation ‘ˌjuː.es poʊ.loʊ eɪeɪesén’ sounds redundant. Even if the second word “POLO” means ‘a game played on horseback by two teams of four players each’, given a high reputation of the word as a source indicator or an abbreviation of ‘POLO RALPH LAUREN’ the Board can’t overlook the fact that it has the same spelling as RALPH LAUREN’s famous apparel brand.
If so, relevant consumers would consider “POLO” as a prominent portion of the applied mark and it shall be permissible to compare the portion with the cited mark in assessing similarity of mark.
In this viewpoint, the applied mark would give rise to a sound of ‘poʊ.loʊ’ and the meaning of “RALPH LAUREN’s famous apparel brand”. Therefore, the applied mark shall be deemed confusingly similar to senior registered mark “POLO” owned by The Polo/Lauren Company, L.P in class 18, and others (TM Registration no. 4040052, 4931614, and 4931615).
Based on the foregoing, the Board found that Examiner didn’t error in fact-finding nor applying Article 4(1)(xi) and (xv) of the Trademark Law and decided to refuse the applied mark accordingly.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM