The Polo/Lauren Company LP is a holder of the registered trademark of “POLO SPORT” since 1967. The trademark is well known and used by the company with various combinations as well as different versions. The company also holds a logo of one horse rider playing polo. Hence, in India too, the trademark is registered under the Trademark Act 1999 to use the logo and TM for various goods and services including clothing, textiles, soaps, footwear, perfumes and much more. The company stated that the court recognised the trademark held by the company in the previously held judgment of the case ‘the Polo/Lauren Company L.P. v. Rohit S. Bajaj’ in 2011 and the company confirmed that the registered marks can be used to distinguish goods of their company with those of others.
Sandeep Arora had registered his brand name and logo which was quite identical to that of the Polo/Lauren company. The Polo/Lauren claimed that Sandeep Arora in the questioned copyright registration was an infringement of the company’s copyright in a literary and artistic way. The company also alleged the misappropriation of the word ‘POLO’ and ‘SPORT’ along with the misuse of four horses with the rider playing the sport polo. The company claimed that Sandeep Arora did not fulfil the clauses according to originality with respect to Section 13 (1)(a) of the Act along with stating that the work done by him is not published and hence if removal is instated, it would not lead to any kind of prejudice. Thus, keeping in mind the above points, the company submitted before the court that the certificate of registration granted to him should be cancelled.
What were the main issues of this infringement case?
- Is the petition filed by the POLO/LAUREN company maintainable or not?
- If the brand and logo registered by Sandeep Arora substantially identical to that of the company?
- If the Registry office for issuing the registration certificate failed to exercise their duty of injury before they gave Sandeep Arora Certificate of Registration according to Section 45 (2) of the Trademark Act 1999?
The argument presented on behalf of Sandeep Arora for the contentions were :
- He had been using the words “ARRAS SPORTS POLO” since 2020 in their perfume business
- That their copyright is substantially distinct from the Company’s mark
- Their logo is using 4 horses with riders and they are not playing polo hence, it is distinct from the Company’s mark.
The court stated that in order to determine the identical nature between both trademarks need to be compared. After cautious and intricate observation, the court found that the logo used by Sandeep Arora falls under the limitation of the company’s logo. According to Section 50n of the Copyrights act, Sandeep Arora was entitled to maintain the petition. A focus was also put on the test of originality of the said logo under 13 (1) (a). After intricate scrutiny, the court stated that Sandeep Arora using 4 horses with riders was titled in such a manner that it was quite similar to the logo of ‘a horse with a person riding it while flinging his club to hit a ball in the sport of polo’, the Company’s registered trademark and the court found this on a qualitative basis and not quantitative. Along with the horses, Sandeep Arora also used the words ‘POLO’ AND ‘SPORTS’. It was also found that the difference between both logos was not that distinct and hence, the court stated that Sandeep Arora’s logo was not eligible to be a registered trademark.
The court used the precedent of Marico Ltd. v. Mrs Jagjit Kaur, 2018 SCC OnLine Del 8488 while talking about the issue of copyright rectification, where it was stated: “Registration of copyright cannot be granted to works which are 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 registration or entry made in the register would be an entry wrongly made.” The court also made the observation that the registered trademark of the company “POLO SPORT” & “HORSE WITH A PERSON RIDING ON IT WHILE FLINGIING HIS CLUB TO HIT A BALL IN THE SPORT OF POLO” has been used numerous times in the market since 1967.
The court made a final judgement which stated :
- That, the company’s products hold very high goodwill and reputation and Sandeep Arora’s logo and mark leave no doubt but his intention in bad faith to copy the mark of the company. Hence, they passed an order to expunge the mark of Sandeep Arora from the copyright registry.
- That, the Registry office for issuing registration certificate did not fulfil their duty according to Section 42(2) of the Trademark act and hence, had to cancel the copyright registration for artwork titled ‘SPORTS POLO’ under No. A-136709/2021 from the Register of Copyrights within a period of eight weeks
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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