The Polo/Laurent Company L.P. was granted an ex-parte interim injunction on 07th November 2023 by the Delhi High Court against Home Needs, which previously the Tis Hazari District Court vacated in the impugned order.
Brief Background
The appellant, The Polo/Laurent Company L.P., filed the appeal before the Delhi High Court against the dismissal passed by the Tis Hazari Court against an application seeking an interim injunction to restrain the defendant, Home Needs, from exporting, manufacturing, marketing, using, selling/soliciting, advertising, etc. and the trade mark/label 'POLOLIFETIME', word 'POLO' and the mark 'RALPH LAUREN' carrying with it a picture of a polo player.
The appellant manufactures, distributes, trades, and sells a wide range of clothing, fashion, and lifestyle products, including fashion wear, sportswear, eyewear, luggage, bags, and luxurious home décor, as well as other allied and related goods and services.
The appellant started its business in 1967 and has since been using it in conjunction with other words/marks in various styles and artistic formats with and without the device of Polo Player, which had been created and were being created over time, namely POLO, POLO RALPH LAUREN.
The appellant claimed that 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, and that the defendant had adopted and begun using the trademarks 'POLOLIFETIME', POLO, POLO RALPH LAUREN, about its products.
The appellate also claimed that adding the word 'LIFETIME' to the phrase 'POLO' did not make it distinctive and identifiable. It was further said that the defendant's trademark/label was identical and deceptively like the plaintiff's trademark/label in every way, including phonetically, graphically, and architecturally, in its basic idea and critical elements.
The District Court Decision That Was Challenged
The Tis Hazari District Court observed that in most of the plaintiff's trade mark, besides the POLO word, Ralph Lauren was also used along with the device mark of a polo player on a horse, whereas in the defendant's trade mark besides POLO, the word 'Lifetime' was also used hence, except the word 'POLO' there was no similarity between plaintiff's trade mark and defendant's trade mark.
The Court further opined that it was prima facie evident from the documents that the plaintiff was in the business of manufacturing/selling fashion wear. In contrast, the defendant was admittedly in the business of manufacturing/selling kitchenware goods, so they were dealing with different goods. There was very little chance of customers/purchasers of the defendant's goods being confused that they were purchasing the plaintiff's goods.
As a result, the Court rejected the plaintiff's counsel's allegation that the plaintiff had such goodwill and reputation in India that purchasers would associate the defendant's goods with the plaintiff's due to using the word POLO in the defendant's trademark.
The Court stated that the plaintiff began selling fashion goods in India in 2018, but the defendant's predecessor or even the defendant began using the trade mark 'POLO' considerably earlier. According to the Court, the invoice filed by the defendant proved that it produced and sold goods with the trademark 'POLO' since 2005. The defendant's predecessor applied for registration of the trademark 'POLO' in 2009. However, he later abandoned it, and the defendant got the mark 'POLO Lifetime' registered in 2011. Hence, the plaintiff had prima facie failed to prove that it was a prior user in India.
As a result, the Court determined that the plaintiff had failed to demonstrate prima facie that the defendant was infringing on the plaintiff's trademark or passing off its goods as the plaintiff's goods. Furthermore, the plaintiff failed to demonstrate that the balance of convenience was in its favour and that irreparable injury or loss would be caused to the plaintiff rather than the defendant as it would amount to the closure of his business, even though the defendant was the registered owner of the trade mark 'POLO Lifetime' and that the said registration had not been cancelled, so the plaintiff was not entitled to injunction relief.
The Decision By The Delhi High Court
Justice Yashwant Varma and Justice Ravinder Dudeja found it prima facie that the impugned order passed by the Tis Hazari District Court on 14th July 2023 is not sustainable.
They were considering the material produced by Sr. Adv. Sanjeev Sindhwani, the Court found that the defendant holds a registration for the trademark "POLOFORLIFETIME", a composite word, which was registered on 25th February 2011. and on the other hand, the appellant held the registration for the word 'POLO' and the mark 'RALPH LAUREN' carrying the picture of a polo player as part of the device registration registered in India on 04th January 1980.
The high Court took reference from one of the previous cases, The Polo/Lauren Company L.P. vs. Rohit S. Bajaj & Ors, where it was held that the trademark POLO / RALPH LAUREN / POLO PLAYER DEVICE was liable to be recognized as ‘well-known’ marks as defined under Section 2(1)(zg) of the Trade Marks Act, 1999.
The Court found merit in the appeal challenging the order passed by the District Court and put a stay on it till the next hearing, i.e. on 01st February 2023.
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