201911.27
13

Polo player device for fragrances not publici juris

Does registration of a composite mark confer on the proprietor monopoly over prominent features of the mark? This is the crux of the issue in the lis between two entities dealing in perfumes and fragrances. The Plaintiffs, Lifestyle Equities C.V. and Ors (Lifestyle) has filed suit against the Defendants, Royal County of Berkshire Polo Club Ltd and Ors (Royal County) before the Delhi High Court alleging infringement of trademark, copyright, passing off, unfair competition, damages, etc. Lifestyle’s injunction application is under consideration.

Lifestyle’s pleading and arguments:

  1. They are the registered proprietor of the trademark Beverly Hills Polo Club in class 3 in relation to perfumes. Composite use of the Polo Player Device and word mark “Beverly Hills Polo Club” written in a stylized manner with other artistic elements, branding features and colour combinations makes the logo mark unique and distinctive.
  2. The Polo Player Device contained in the logo mark is an essential and distinctive feature of the mark.
  3. Perfumes under the said trademark have been extensively sold in India since 2012 and the trade and public are well aware of its quality.
  4. Royal County, based in the UK is engaged in the sale of fragrance, apparel products, belts, watches etc. under the brand “Royal County of Berkshire Polo Club”
  5. Lifestyle in May 2018 learnt about the launch, in India, of fragrance products Royal County under the infringing logo mark and trade dress. Royal County’s logo mark contains an identical/deceptively similar Polo Player Device as contained in Lifestyle’s logo mark.
  6. Moreover, Royal County’s trade dress contains identical/deceptively similar get up, colour combination arrangement of features figures/characters, logo, device as of Lifestyle. Thus, adoption is dishonest to deceive the consumers and to piggyback on the reputation and goodwill of Lifestyle.

Royal County in defence states:

  1. The rival trademarks and trade dress are not similar.
  2. The marks have to be taken as a whole and no one can claim rights over part of a trade mark.
  3. Lifestyle does not have any registration of any part of the composite mark such as a polo player, horse, polo player on a horse back, club mallet. Further, the device of a polo player on a horseback per se is common to the trade and to claim exclusivity on the same is illogical.
  4. Their trademark indicates its complete trade name, i.e. Royal County of Berkshire Polo Club which is a well-known polo club in UK, its establishment dating back to the year 1985 and been in use for more than 30 years internationally.
  5. Lifestyle has copied the ‘polo player on a horse back’ device from Polo/ Ralph Lauren Company LP. Polo player on a horse is juris publici and Lifestyle cannot claim any exclusive use.

The court after considering the pleadings, arguments and case laws held:

  • It is a settled principle of law that the marks have to be compared as a whole. As a part of this evaluation process, the Court is required to determine what is/are the prominent and/or essential features of the mark taken as a whole. The protection and/or exclusivity will be conferred on these features and not on insignificant trivia.
  • It has also been held that the registration of a device or label would entitle the proprietor to protection against use of such device or label by a rival in trade if the rival’s use is identical or similar to the registered trade mark and the use is in connection with identical or similar goods or services covered by such registered trade mark. The identity or similarity of the marks has to be assessed on the basis of the entirety of the mark as registered.
  • In the present case Royal County’s logo has broad similarities with that of Lifestyle and is bound to cause confusion. Further, the parties are using the said mark for the same product, i.e. fragrances.
  • Royal County’s plea that Lifestyle cannot claim exclusivity over the polo player device is misplaced. There is no dispute that the polo player device is an essential and significant feature of the mark of Lifestyle and Royal County has used a device that is deceptively similar.
  • The contention that polo player device is publici juris and Lifestyle has copied the features from Ralph Lauren and Denver is misplaced. Ralph Lauren and Denver has not in any manner objected to the use of the said device by Lifestyle. Lifestyle has been using the mark since 1982 and from 2012 in relation to fragrance.
  • Royal County themselves have applied for registration of the logo mark with the polo player device. Moreover, their mark as a whole is deceptively similar to Lifestyle. The polo player device is an essential feature of the label mark of Lifestyle and cannot be separated and compared separately as sought.
  • With regard to the contention that Royal County is using the full name it is to be noted that Lifestyle’s objection is not the use of the name but the polo player device.

In light of the above, the Court restrained Royal County from selling, dealing or advertising any product using the impugned logo mark or any other mark deceptively similar to Lifestyle’s logo mark.