MALAYSIA: SANTA BARBARA POLO & RACQUET CLUB TRIUMPHS IN BATTLE OF POLOS

September 1st, 2015

 

This article is based on the decision of the High Court of Malaya in Kuala Lumpur involves between BRG Brilliant Rubber Goods (M) Sdn. Bhd. (“hereinafter referred as “the Plaintiff”) which is a company incorporated in Malaysia who has been manufacturing and selling a wide range of goods under its registered polo01 mark in Classes 25 and 28 in Malaysia since 28 August 1981 (hereinafter referred to as “the Plaintiff’s Mark”).

 

The Defendant on the other hand is Santa Barbara Polo & Racquet Club which based in United States of America (“hereinafter referred as Defendant”), which is a management company of Santa Barbara Polo & Racquet Club (“the Club”). The Defendant has been using its mark polo02 (hereinafter referred to as “the Defendant’s Mark”) since 1970s. The Defendant filed the trade mark registrations for the Defendant’s Mark on 3 March 1993 in, among others, Classes 25 and 18 in Malaysia and the Defendant’s Mark was subsequently accepted and was published for opposition purposes.

 

The Plaintiff had opposed the Defendant’s trade mark application. It argued that the Defendant’s Marl is confusingly similar to its registered polo01 mark. The Registrar during the opposition proceedings held that the Plaintiff’s mark and the Defendant’s Mark are dissimilar and had dismissed opposition and the Defendant Mark was subsequently registered.

 

The Plaintiff then filed a legal suit at the High Court of Malaya in Kuala Lumpur to appeal the decision of the Registrar and to get the Defendant’s Mark cancelled.

 

The Plaintiff had submitted that (1) the Registrar failed to consider its arguments on why the Defendant’s Mark is confusingly/deceptively similar to Plaintiff’s Mark; (2) the Defendant is not a bona fide proprietor under the section 25(1) of the Malaysian Trade Marks Act; (3) Plaintiff has acquired goodwill and reputation in relation to POLO marks; (4) Defendant failed to establish the distinctiveness of the Defendant’s Mark under Section 10 of the Act; (5) Registrar failed to hold the Plaintiff’s POLO marks within the meaning of Sections 14(1) and 70B of the Act and (6) Registrar had erred in law and/or in fact in failing to hold that registration and/or use of the Defendant’s Mark.

However, the Defendant submitted that the both Plaintiff’s and Defendant’s Marks are not visually confusing or deceptive. The Defendant also argued that the Plaintiff had not secured any registration for the plain word mark “Polo” but rather a stylized version and therefore they cannot claim to have exclusive rights to all variations of the Plaintiff’s Mark.

The High Court held that there is no similarity between both trade marks and it upheld the Registrar’s decision. The main ground for the Court to come to this conclusion is because the Defendant’s Mark is visually and phonetically different from the Plaintiff’s Mark and therefore it cannot be said to be confusingly/deceptively similar. The Court also noted that the Defendant’s Mark is actually the full name of the Club and therefore it should enjoy exclusively at least for its own name.

Court held that there is no merit in the Plaintiff’s appeal and the case was dismissed with costs to the Plaintiff.