When Polo Universal LTD and Apollo Adex LTD. applied for a number of trademarks (138302,3 and 138296-9) including the word Polo, the fashion house Ralph Lauren filed oppositions.
After both sides submitted their evidence, a hearing was set up. However, at the last-minute, the witness for Ralph Lauren failed to show, without providing good reason for his absence. This made it impossible for the applicant’s attorneys to cross-examine.
Based on an Israel Supreme Court precedent concerning 6181/96 Yigal Cardi vs. Bacardi LTD., where a witness for the rum manufacturer failed to show, albeit with good reason, the Deputy Commissioner of Patents and Trademarks, Noach Shalev Shmulovich, who heard the case, decided that the evidence submitted by Ralph Lauren, that could not be challenged in court, was of very limited value.
Nevertheless, since the Ralph Lauren Polo mark is well-known internationally and well-known in Israel, the Deputy Commissioner ruled that there is a public interest in preventing fashion accessories marked Polo that did not originate with Ralph Loren being sold, as this would lead to consumers mistakenly purchasing goods believed to be associated with Ralph Loren, that were nothing to do with the fashion house.
Although Loren’s marks usually included a Polo player on a horse, whereas the applicants marks included what appears to be a stylized hockey stick or golf club, the Deputy Commissioner ruled that the public would probably view the mark as two separate marks, one for the word Polo and the other for the rider, rather than two elements of a combined mark.
That the opposed marks included a second word, describing the type of good, was considered irrelevant, as there was still a likelihood of confusion as to the origin of the goods. Likewise, although when compared side by side, the opposed marks are visually different, the word Polo is so well-known for fashion goods, that there was still a likelihood of confusion, and the goods would not generally be sold side by side.
Consequently, the marks for leather goods, clothing, jewelry and the like, were disallowed, however the marks for measuring equipment were allowed on condition that optical goods were disclaimed. This was justified by pointing out that Volswagen sold a car branded as Polo, and so for non-fashion goods, the term was not associated with Ralph Loren.
Generally, the successful party in an opposition proceedings is awarded costs, and where both sides win partially, each side carries his own legal costs. However, in this instance, to compensate the applicant’s attorney for the time wasted in preparing for a hearing where the opposer failed to show, and essentially as a punishment for contempt and for wasting the Patent Office’s time by not showing up for the hearing, the Deputy Commissioner ruled NIS 75,000 (about $20,000) in legal costs against Loren, to be paid to Polo Universal and to Apollo Adex.
The case: Opposition to Israel trademark numbers 138302,3 and 138296-9 to Apollo Adex and Polo Universal.
I enjoyed this decision, particularly the large legal costs award to the losing side. I suspect the Deputy Commissioner enjoyed awarding it as well.
I’ve also wondered why Polo Universal’s logo features a hockey stick, although I don’t either polo or hockey are widely played in Israel, so am not sure how many customers notice the mixed metaphor. I also am surprises to see button down shirts with collars sold as Polo shirts.
Probably because they are not widely available in Israel, the Polo mint was not discussed. Then again, if I remember correctly, the mints were a freebie that were wrapped around the holes…