“POLO” sues “POLO RALPH LAUREN”: guess the result.

by Summer Xia

Polo Ralph Lauren is famous for its preppy look started by its founder Ralph Lauren. The brand has always been dedicated to protect its intellectual property rights, starting from the famous dispute with the conational U.S. Polo Association who uses a trademark of two polo players on a horse.

In China, Polo Ralph Lauren is fighting – as many other brands – against several companies trying to register and use similar trademarks. 

In this article we are reviewing the case against Guangzhou Aichi Leather Products Co., Ltd. (Aichi), owner of the trademark “POLO” No. 3301575 Class 18.

Recently, the Beijing IP Court ruled in favour of the American brand with a second instance decision which overturned the previous judgement. 

In 2016 Aichi sued the American company for the infringement of the trademark “POLO” in class 18 (leather goods and luggage) and won the first instance being awarded 3ml RMB damages. 

Background

Guangzhou Aichi Leather Products Co., Ltd. (Aichi)’s “POLO” trademark  No. 3301575 Class 18 was approved for registration in August 2007. Ralph Lauren Trading (Shanghai) Co., Ltd. (“Ralph Lauren”)’s parent company owns trademark registrations No. 1230236 “POLO BY RALPH LAUREN” and No.1620757 “POLO RALPH LAUREN” for bags in Class 18. 

In 2016, Aichi purchased dozens of bags with the logo “POLO RALPH LAUREN” from RALPH LAUREN’s stores. Then, Aichi filed a lawsuit to the Court alleging that Ralph Lauren’s use of the trademark “Polo Ralph Lauren” infringes its prior trademark rights on POLO.

In the 1st instance, the Beijing Chaoyang District People’s Court held that, established in the year 2009 in China, Ralph Lauren and its related companies’ first use of the disputed trademark over “bags” was much later than the application date (May 14, 2007) of the disputed trademark “POLO”. 

Further, there are other “POLO” trademarks filed by Ralph Lauren in Class 18 that were rejected by the CTMO and TRAB (currently known as CNIPA). The Beijing Chaoyang District People’s Court concluded that the malice of Ralph Lauren was obvious. The Court ruled that Ralph Lauren should compensate Aichi economic losses of RMB 3 million and reasonable expenses of RMB 30,000.

Ralph Lauren, not satisfied with the 1st instance decision, appealed to the Beijing IP Court (herein after referred to as the Court) which reversed the 1st instance decision and dismissed all Aichi’s claims.  

Beijing IP Court’s opinion

The court found that Ralph Lauren’s use of the trademark should not cause confusion among relevant consumers and is without malicious intention.

The court found that although many products – such as backpacks in class 18 - sold by Ralph Lauren’s “RALPH LAUREN” and “POLO RALPH LAUREN” stores are with “POLO” logo or highlighted the “POLO” logo, the disputed stores are all using “RALPH LAUREN” as store signs or main logo, and there are also “POLO RALPH LAUREN” logo on the products or on the label of the products.

In terms of the specific way of using the alleged infringing logo, the aforesaid alleged infringing products were all displayed and sold at the exclusive stores of RALPH LAUREN, and marked the words of "RALPH LAUREN" and "RALPH LAUREN Trading (Shanghai) CO., LTD.", which clearly indicates the provider of the alleged infringing products. Thus, the Court held that such use of the trademark will not cause confusion or misunderstanding as to the origins of goods or services to the relevant public.

Additionally, the court opines that RALPH LAUREN does not have the subjective intention to maliciously attach to the goodwill of Aichi’s trademark. This is because RALPH LAUREN has applied and registered many “POLO BY RALPH LAUREN”, “POLO RALPH LAUREN”, “POLO” trademarks in Classes 18, 24 and 25. It also promotes and widely use its trademarks. 

The "RALPH LAUREN" logo has formed a stable correspondence with Ralph Lauren and its affiliated company, and has a certain degree of popularity and influence. 

Also, Aichi did not provide any evidence to prove its use of the trademark involved in the alleged infringing goods and the influence of its use. 

Therefore, based on the abovementioned facts and documented evidence, the court held that RALPH LAUREN does not have the subjective motive and objective demand of maliciously trying to attach the brand reputation of Aichi's trademark.  

Consequently, the Court decided to support Ralph Lauren’s claim and revoked the 1st instance decision.

 

Appellant Ralph Lauren	Respondent Aichi
No.  1230236; Class 18   No.  1620757; Class 18	No. 3301575 Class 18
Stores  decoration from the internet   Use  of the trademark on bags from the internet	Stores decoration from Polo sport’s weibo Stores decoration from the internet

Comment

Generally speaking, no businessmen like to be involved in lawsuits. However, although reluctantly, many foreign brands were being involved with intellectual property disputes in China. 

Some lawsuits are initiated by brands owner for IP protection, and some brands were passively involved because some trademark squatters not only want to take unfair advantage of the disputed mark, but even bite back towards the authentic trademark owner by alleging trademark infringement.

From this POLO case, we can see that even if the squatter successfully registered a trademark, when determining whether the authentic owner’s use of the disputed trademark constitutes trademark infringement, the court will not only consider the similarity degree over similar goods, but will also take into account a variety of factors. 

For example, the reputation, use and influence of the prior trademark, the way the alleged infringer uses the trademark and so on. 

Although in this case the court did not comment on whether the lawsuit initiated by Aichi belongs to abuse of trademark rights, the decision still shows the court’s attitude that if the trademark registrant intent to take unfair advantage from the disputed mark, and the use of the later could distinguish the origin of goods, it should not constitute trademark infringement.