Case Name: Polo/Lauren Company LP v. Sandeep Arora and Another
Petitioner: Polo/Lauren Company LP
Respondent no. 1: Sandeep Arora
Respondent no. 1: Registry office for issuing registration certificate
Judge: Justice Amit Bansal
Date of decision: 01.02.2022
Fact of the case:
The petitioner is a registered trademark holder since the year 1967 of ‘POLO SPORT’. The petitioner’s trademark is a well-known trademark and is being used by the petitioner in various combination and version. The petitioner holds a logo having one horse with the rider playing polo. In India the petitioner’s mark is being registered under Trademark Act, 1999 for the purpose of using the same in respect of carious goods and services inter alia clothing, textiles, footwear, soaps, perfumes etc. The petitioner contented that court had also recognized the petitioner’s trademark in the judgement of the case of The Polo/Lauren Company L.P. v. Rohit S. Bajaj in the year 2011. It was affirmed by the petitioner that registered marks are capable of distinguishing goods of the petitioner with those of the others.
The respondent no. 1 had a registered the brand name as well as the logo identical to the petitioner. The petitioner’s contention was that the respondent no. 1 in the impugned copyright registration is an infringement of the petitioner’s literary and artistic copyright. Also, respondent no. 1 has misappropriated the word ‘POLO’ as well as ‘SPORT’. The petitioner also contended that the respondent no. 1 just used four horses with the rider playing polo. It was stated by the petitioner that its respondent no. 1 failed to fulfil the essential of originality in respect of Section 13 (1) (a) of the act. The petitioner also stated that as the work of respondent no. 1 is unpublished thus the removal of the said mark would not lead to prejudice to the respondent. Thus, the petitioner submitted before the court that the registration certificated granted to the respondent no. 1should be cancelled.
- Whether the petition filed is maintainable or not?
- Whether the respondent no 1’s registered brand and logo are substantially similar to those of the petitioner?
- Whether the respondent no. 2 failed to exercise the duty of injury before granting respondent no. 1 Certificate of Registration as per Section 45 (2) of the Trademark Act, 1999?
The respondent no. 1 on behalf of the above contention stated that
(i) The respondent no. 1 has been using the words ‘ARRAS SPORTS POLO’ since the year 2020 in their perfumery business;
(ii) Their copyrighted mark is substantially different from that of the petitioner’s marks; and,
(iii) even in respect of logo, the respondent no. 1is using four horses with riders on them, who are not playing the game of Polo and therefore, the same is very different from the registered trademarks of the petitioner.
The court in order to determine the substantial similarity between the trademarks of both the parties compared.
After observing both the logos carefully the court stated that the respondent’s logo is imitation of the petitioner’s registered logo. As per section 50 of the Copyright Act petitioner was made entitled to maintain the present petition. The court also focused on the test of originality of the impugned logo as per Section 13 (1) (a). The court said that after the thorough comparison of both the logo and found that the respondent no. 1 has used four horses with riders, tilted in a manner very similar to the logo of ‘horse with a person riding it while flinging his club to hit a ball in the sport of polo’, which is a registered trademark of the petitioner. The court stated that focus should be made not on the quantitative basis but the qualitative basis. Not only the horses, the respondent no. 1 has also used the word marks of the petitioner i.e., SPORTS and POLO. The court also stated that the difference between the logo of both the parties are not significantly different thus is the respondent’s logo is not eligible to be registered as trademark.
The court also focused upon Section 45 (1) of the Trademark Act, 1999 stating that the while applying for the registration of marks the application must include a statement to the effect that no trademark identical with or deceptively similar to such artistic work has been registered or no application has been made under the aforesaid Act for such registration by, any person other than the applicant. The court affirms that the respondent No. 2 has failed to fulfil the duty of inquiry as per Section 45 (2) of the act. If the respondent no. 2 had gone through the records of registered trademark would have not granted registration in favour of respondent no. 1.
The court while stating the case of Marico Ltd. v. Mrs. Jagjit Kaur, 2018 SCC OnLine Del 8488 while dealing with the issue of rectification of copyright had observed as under:
“Registration of copyright cannot be granted to works which are a reproduction or imitation of other original works. If any person has obtained registration of copyright of a work which is not an original work under Section 13 of the Copyright Act, such a registration or entry made in the register would be an entry wrongly made.”
The court also observed that the petitioner registered trademark i.e., “POLO SPORT” & “horse with a person riding it while flinging his club to hit a ball in the sport of polo” are widely used in the market since 1967.
- The court allowed the present petition.
- The court asserted that the petitioner’s product holds high goodwill and reputation, and the respondent has been the registered trademark holder of the impugned trademark since 1967. The respondent no. 1’s both the logo and the brand name leave no doubt in my mind that the respondent no. 1 has dishonestly and in bad faith copied the registered trademarks of the petitioner. The respondent’s work was the imitation of the petitioner original artistic work. Thus pass an order to expunge the respondent no 1’s from the register of copyright.
- The respondent no. 2 failed to fulfil its duty as per Section 42 (2) of the Trademark Act, 1999 and was directed to cancel the copyright registration for the artwork titled ‘SPORTS POLO’ under No. A-136709/2021 from the Register of Copyrights within eight weeks.
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