SINGAPORE: POLO/LAUREN TAKES ON THE MIGHTY USPA

July 31st, 2015

 

In opposition proceedings involving Singapore-based Polo/Lauren Company, L. P. v United States Polo Associates, the Intellectual Property Office of Singapore (IPOS) has refused registration of Singapore Trade Mark Application No. T1215440A in Class 09 filed by United States Polo Association.

United States Polo Association (“the Applicant”) filed Singapore Trade Mark Application No. T1215440A for the mark uspa in Class 09 (hereinafter referred to as the “Application Mark”). The Application Mark was accepted by IPOS and subsequently published in the Trade Marks Journal for opposition on 30 November 2012. It is a well-known fact that the Applicant is the governing body of the sport of polo in the United States since 1890 and it has ventured into selling clothing, watches, bags etc.

Polo/Lauren Company, L. P. (“hereinafter referred as the Opponent”) filed a Notice of Opposition on 29 January 2013 to apply to IPOS to refuse the Application Mark from being registered. They have provided evidence of use of their marks and the trade mark registration details of their Singapore trade mark no. T9604857H for the mark uspa2 which is allegedly similar to the one filed by the Applicant.

Under the Singapore trade mark laws, a trade mark shall not be registered if because it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public.

During the opposition proceedings, the Opponent had argued with regards to the Double Horsemen Device as the dominant component of the Application Mark which involves the size factor and technical distinctiveness factor of the text “USPA” in much smaller font size. Meanwhile the Single Polo Player Mark possesses inherent technical distinctiveness as well as a high degree of acquired technical distinctiveness.

The IPOS disagreed with the Opponent’s arguments that the word “USPA” is smaller than the device and it concluded that there is no dominant component in the Application Mark. Both the device and text are equally significant in the Application Mark. Therefore, the visual comparison between the Single Polo Player Mark and the Application Mark cannot be on the basis of “Single Polo Player Mark versus Double Horsemen Device” or “Single Polo Player Mark versus USPA”.

IPOS concluded that there are no aural similarities between the Applicant’s and Opponent’s marks and held that the opponent had also failed to prove the similarities and application made in bad faith. IPOS has refused the opposition proceedings and allowed the Application Mark to proceed to registration.