The battle between Polo Ralph Lauren and U.S. Polo Assn. has been ongoing ever since Ralph Lauren first sued U.S Polo Association in 1984 on claims of trademark infringement.
More recently, in July 2020, the Appeal Board of the Japan Patent Office (JPO) (see the full decision copy below) has confirmed the examiner’s decision to deny registration of the U.S Polo ASSN trademark due to similarity and risk of confusion with the earlier registered trademark POLO, owned by The Polo / Lauren Company.
On January 13, 2016, the United States Polo Association filed an application for trademark registration for the brand U.S POLO ASSN to protect some of its products, such as bags and leather items. Two years later -on January 12, 2018- the JPO examiner rejected the US POLO ASSN trademark application based on the provisions of Article 4 (1) (xi) and (xv) of Japan’s Trademark Law.
According to Japan’s Trademark law, section (xi) prohibits the registration of a later mark that is identical or similar to an earlier registered mark. Additionally, section (xv) the XV prohibits the registration of any trademark that may create confusion with other business entity’s well-known goods or services.
In this sense, the Board determined that the trademark applied for US POLO ASSN is composed of the terms US, POLO, and ASSN. ASSN is the abbreviation of association, but for the average Japanese consumer this abbreviation is unfamiliar and, as result, the Japanese consumer will not take it as a reference of the U.S. POLO ASSN brand.
On the other hand, the word “POLO” -besides being associated with the worldwide known sport- tends to be associated with the renowned POLO Ralph Lauren brand. The Board, therefore, could not ignore the high degree of similarity between the brands and decided that the applied mark shall be deemed confusingly similar to earlier registered mark “POLO” owned by The Polo/Lauren Company, L.P in class 18, and others (TM Registration no. 4040052, 4931614, and 4931615).
These are the reasons why the JPO considered that the trademark applied for is very similar to that of Ralph Lauren’s and could create confusion among the consumers.
Therefore, the Board determined that the examiner had not made a mistake in denying the registration of the mark based on Article 4 (1) (xi) and (xv).
See the full translated decision of the JPO:
Reported by Elisa García, Student Ambassador