The Polo/Lauren Company L.P. v. Home Needs, 2023

The Polo/Lauren Company L.P. v. Home Needs, 2023

SCC Online Dis Crt (Del) 17

Order dated 14-7-2023

Background

The plaintiff is a company that produces and sells a wide range of clothing, fashion, and lifestyle products such as fashion wear, sportswear, eyewear, luggage, bags, luxurious home decor, and other related goods. They have been using the trademark 'POLO' since 1967, along with other words and marks in various styles, formats, and artistic designs, with or without the device of a Polo Player.

The plaintiff claims that the defendant is also engaged in the business of manufacturing and selling household products and kitchen utensils, including stainless steel vacuum-insulated bottles, trays, cookware, dinnerware, and other related goods. The defendant started using the trademark 'POLO LIFETIME' in relation to their products, which the plaintiff believes is a violation of their statutory and common law rights and copyright. The plaintiff argues that the addition of the word 'LIFETIME' does not make the trademark distinctive and distinguishable.

The plaintiff further claims that the defendant's trademark is identical and deceptively similar to theirs, including in its phonetics, visuals, structure, basic idea, and essential features.

Contention of the Parties

The Polo/Lauren Company L.P. filed an appeal before the Delhi High Court against an order issued by the Tis Hazari Court on 14th July 2023. The order had vacated an ad-interim injunction that restrained Home Needs, the defendant, from exporting, manufacturing, marketing, using, selling/soliciting, and advertising the trade mark/label ‘POLOLIFETIME’, the word ‘POLO’, and the mark ‘RALPH LAUREN’ which carried with it a picture of a polo player.

The appellant, Polo/Lauren Company L.P. manufactures, distributes, trades, and sells a wide range of clothing, fashion, and lifestyle products that include fashion wear, sportswear, eyewear, luggage, bags, luxurious home décor, as well as other allied and related goods and services. The appellant began its business in 1967 and has since been using the mark POLO in conjunction with other words/marks in various styles and artistic formats with and without the device of Polo Player, namely POLO, POLO RALPH LAUREN.

The appellant claimed that Home Needs, the defendant, was in the business of manufacturing, marketing, soliciting, selling, displaying, and trading a variety of household products and kitchen utensils, including but not limited to stainless steel vacuum insulated bottles, single wall bottles, trays, cookware, dinnerware, and other allied/related products, under the trademarks ‘POLOLIFETIME’, POLO, and Device of Polo Player for its products. These trademarks were identical and deceptively similar to the marks of the plaintiff.

Adding the word ‘LIFETIME’ to the phrase ‘POLO’ did not make it distinctive and identifiable, according to the Appellant/Plaintiff. It was further stated that Home Needs' trademark/label was identical and deceptively similar to the plaintiff’s trademark/label in every way, including phonetically, graphically, and architecturally, in its basic idea and critical elements.

The Appellant/Plaintiff also contended that the appellant/plaintiff’s mark had been declared as ‘Well-known’ by the Hon’ble High Court of Delhi in the year 2011 in another proceeding, namely IN CS OS 1763/2005 THE POLO/LAUREN CO. LP. V. ROHIT S. BAJAJ, and thus the Appellant/Plaintiff is entitled to better protection.

Analysis, Law, and Decision

The court examined the trademarks of the plaintiff and the defendant and found that besides the word "Polo", the plaintiff also used "Ralph Lauren" and an image of a polo player on a horse. In contrast, the defendant used the word "Lifetime" along with "Polo" in their trademark. Therefore, except for the word "Polo," there was no similarity between the trademarks of the plaintiff and the defendant.

The court also noted that the plaintiff was in the business of manufacturing and selling fashion wear, while the defendant was in the business of manufacturing and selling kitchenware goods. Therefore, they were dealing with different goods and there was very little chance of confusion among customers.

The court did not agree with the plaintiff's contention that their goodwill and reputation in India was such that customers would relate the defendant's goods to those of the plaintiff due to the use of the word "Polo" in the defendant's trademark.

Furthermore, the court found that the defendant had been using the trademark "Polo" since 2005, and their predecessor had even applied for registration of the trademark in 2009. Although the predecessor later abandoned the registration, the defendant got the mark "Polo Lifetime" registered in 2011. Therefore, the plaintiff had failed to prove that they were the prior user of the trademark in India.

The court held that the plaintiff had failed to establish that the defendant was infringing their trademark or passing off their goods as the goods of the plaintiff. Additionally, the plaintiff failed to show that the balance of convenience lay in their favour and that irreparable injury or loss would be caused to them.

On the contrary, the court found that the defendant would suffer irreparable loss if the injunction was granted as it would lead to the shutdown of their business. The defendant was the registered owner of the trademark "Polo Lifetime," and to date, the registration had not been cancelled. Therefore, the plaintiff was not entitled to relief of injunction. Thus, the court dismissed the application, and the interim stay granted earlier stands vacated.

Court Analysis

The court found no evidence of trademark infringement or passing off. The defendant had been using the "Polo" mark since 2005, and the plaintiff could not establish prior use in India. The court upheld the defendant's rights and dismissed the plaintiff's application. The decision emphasizes the importance of examining trademarks and prior use in establishing claims.