IN THE HEARINGS AND MEDIATION DEPARTMENT OF
THE INTELLECTUAL PROPERTY OFFICE OF SINGAPOREREPUBLIC OF SINGAPORE

Trade Mark No. T1114738Z
Hearing Date: 26 September 2017

IN THE MATTER OF A TRADE MARK REGISTRATION IN THE NAME OFROYAL COUNTY OF BERKSHIRE POLO CLUB LTDAND

APPLICATION FOR DECLARATION OF INVALIDITY THEREOF BY

THE POLO/LAUREN COMPANY, L.P.

Hearing Officer:

Ms Tan Mei Lin
Principal Assistant Registrar of Trade Marks

Representation:
Mr Sukumar Karuppiah (Ravindran Associates) for the Applicant
Ms Janet Lim (Intellect Worldwide (S) Pte Ltd) for the Registered Proprietor
GROUNDS OF DECISION
1
Horses – there is something about this spirited animal that inspires life, books, movies,
sport and even fashion. No wonder then that polo is known as the sport of kings. And that
Ralph Lauren, son of immigrants to America made good, chose a polo player on horseback
for his clothing emblem. To what extent should the motif of this beast of beauty and freedom
be carved out from the domain of common consciousness and shared imagination, to bemonopolised as a trade mark right? And to what extent can one prevent another from using
the idea of a polo player on horseback, whether in the same or different narrative?
2
In the case before me, the Polo/Lauren Company, L.P. (“the Applicant”) seeks tochallenge the rights of Royal County of Berkshire Polo Club Ltd (“the Proprietor”) to the useof the word “Polo” and/or a device of a polo player. Among other things, I have to decide ifthese signs are so distinctive of the Applicant that it is viewed as its exclusive badge of origin
such that other traders should not be allowed to use these signs.
3This is not the first time the Applicant is attempting to stop a competitor from using
such signs, at least in the area of consumer goods. In the past 12 years, at least 6 cases were
heard before this tribunal and the Courts 1 on this issue with various outcomes.
4

The trade mark the Applicant is seeking to invalidate in this case is:(“the Subject Mark”).
5
The Subject Mark was registered on 20 October 2011 (“the Relevant Date”), in relation
to the following goods:
Class No.
9
18

25

Goods
Spectacles, spectacle cases, spectacle frames, spectacle
glasses, sun glasses.
Leather and imitations of leather, and goods made fromthese materials and not included in other classes; animalskins, hides; trunks and travelling bags; umbrellas, parasols
and walking sticks; whips, harnesses and saddlery, articles ofluggage, suitcases, briefcases, tote bags, work bags, toiletrybags, waist bags, sling bags, shoe bags, school bags,
overnight bags, jewellery bags (empty), gym bags, clutchbags, bags for clothes, bags made of leather, bags made ofimitation leather, handbags, shoulder bags, purses, wallets,
shopping bags, suit carriers, attache cases, rucksacks,
holdalls, pouches [bags].
Articles of clothing, footwear and headgear.

(“the Subject Goods”).
6
On 30 December 2013 the Applicant applied for the Subject Mark to be declaredinvalid. The Proprietor filed its Counter-Statement in defence of the registration on 19
February 2014.
7
The Applicant filed evidence in support of its application on 17 December 2014. The
Proprietor filed evidence in support of the Subject Mark’s registration on 30 April 2015. The
Applicant filed its evidence in reply on 8 December 2015. Following the close of evidence, a1Polo/Lauren Co, L.P. v United States Polo Association [2016] SGHC 32, The Polo/Lauren Company, L.P. v
United States Polo Association [2015] SGIPOS 10, The Polo/Lauren Company, L.P. v Lohmun Leather
Products [2009] SGIPOS 1, The Polo/Lauren Co, L.P. v Shop In Department Store Pte Ltd [2006] SGCA 14,
The Polo /Lauren Co, L.P. v Shop In Department Store Pte Ltd [2005] SGHC 175, The Polo/Lauren
Company, L.P. v Boby Footwear Pte Ltd [2005] SGIPOS 16.

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Pre-Hearing Review (“PHR”) was held on 6 January 2016. Subsequent to the PHR, theparties requested for more time before the matter is set down for hearing due to ongoing
discussions between them. On 21 June 2017, the Applicant confirmed that the matter may be
fixed for hearing.
8
The Proprietor filed its written submissions (“the Proprietor’s Written Submissions”)
on 7 September 2017 and the Applicant filed its written submissions (“the Applicant’s
Written Submissions”) on 8 September 2017. The matter came up for hearing on 26
September 2017 and at the hearing the parties submitted Written Rebuttal Submissions (“theApplicant’s Written Rebuttal Submissions” and “the Proprietor’s Written Rebuttal
Submissions” respectively).
Grounds of Invalidation
9
The Applicant relies on a number of grounds in the Trade Marks Act (Cap 332, 2005
Rev Ed) (“the Act”) in support of this application for a declaration of invalidity. They are:
(a)
(b)
(c)

Sections 23(3)(a)(i) read with Section 8(2)(b) of the Act (“the Similarity
Ground”);
Section 23(3)(a)(iii) read with Section 8(4)(b)(i) of the Act (“the Well Known andDamaging Interest Ground”); andSection 23(3)(b) read with Section 8(7)(a) of the Act (“the Passing Off Ground”).

10 For completeness, the Applicant’s Statement of Grounds of Invalidation also stipulated
four other grounds, namely, Sections 7(1)(a) and 7(6) read with Section 23(1) and Section
8(4)(b)(ii)(A) and Section 8(4)(b)(ii)(B) read with Section 23(3)(a)(iii) of the Act. However,in the course of the Registrar’s case management during which grounds had to be confirmed,
the Applicant indicated by letter dated 10 July 2017 that it was not pursuing these grounds.
Applicant’s Evidence
11

The Applicant’s evidence comprises the following:
(a)

(b)

A Statutory Declaration made by Anna Dalla Val, Vice President, Intellectual
Property Counsel of Ralph Lauren Corporation, and also Vice President andSecretary of PRL International, Inc. (PRL International, Inc. being the General
Partner of the Applicant), on 10 December 2014 in New York, United States ofAmerica (“the Applicant’s 1st SD”); andA Statutory Declaration in Reply made by the same Anna Dalla Val on 4
December 2015 in New York, United States of America (“the Applicant’s 2 ndSD”).

Proprietor’s Evidence
12 The Proprietor’s evidence comprises a Statutory Declaration made by Michael Amoore,
General Manager of the Proprietor, on 17 April 2015 in Winkfield, United Kingdom (“theProprietor’s SD”).

Applicable Law and Burden of Proof-3-

13 The applicable law is the Act. Under Section 101(c)(i) of the Act, “the registration of aperson as proprietor of a registered trade mark shall be prima facie evidence of the validity ofthe original registration”. The burden of proof in the present case falls on the Applicant toprove at least one of the grounds of invalidity relied upon on the balance of probabilities.
Background
14
The Proprietor is a polo club founded in 1985 in the County of Berkshire, England. It
claims to be the most exclusive polo club in England with success so resonant that the Princeof Wales became an honoured lifetime member soon after its creation. Apart from polo sportand polo club activities, the Proprietor has also ventured into consumer goods such as
apparels, bags, footwear, eyewear, fashion items and accessories.
15 Besides the Subject Mark, the Proprietor also owns the following trade markregistrations in Singapore:
TM No.

Trade Mark

Class
Goods
No.
T1219216H ROYAL
9
Spectacles; sunglasses; sport glasses(eye glasses); monocles; pince-nez;
COUNTY OF
eyewear; frames for spectacles; cases,
BERKSHIRE
chains, cords and holders adapted for
POLO CLUBspectacles, sunglasses and eye
glasses, cases and holders adapted forlenses; contact lenses,; cases,
containers and holders adapted forcontact lens; part and fittings for all
the aforesaid goods
T1219224I ROYAL
18
Leather; imitation leather; animalskins; hides; trunks (luggage);
COUNTY OF
traveling bags; umbrellas; parasols;
BERKSHIRE
walking sticks; whips; saddlery;
POLO CLUB
articles of luggage; suitcases;
briefcases; tote bags; work bags;
toiletry bags; waist bags; sling bags;
shoe bags; school bags; overnight
bags; jewellery bags (empty); gym
bags; clutch bags; bag for clothes;bags for clothes pegs; bags made ofimitation leather, bags made ofleather; handbags; shoulder bags;
travel bags made of plastic materials;
luggage bags; bags; shopping bags,
garment bags, cosmetic bags [notfitted]; baggages; wheeled bags;
beauty cases [not fitted]; carrying
bags (other than disposable carrierbags), pouches [bags]; purses; leather
wallets; suit carriers; Rucksacks;-4-T1219225G ROYAL
25
COUNTY OF
BERKSHIRE
POLO CLUB

Cosmetic holdalls (not fitted);
haversacks; duffel bags; attachecases; cases for key; shoulder belts
made of leather or imitation leather
Articles of clothing for men, womenand children including jeans, shirts,
blouses, skirts, T-shirts, pants, shorts,
trousers, sweaters, pull-overs,
knitwears, jersey, jumpers, cardigans,jackets, swimming costumes,
underwear, sleepwear, pyjamas,
gowns, sportswear, socks, stocking,belts, caps and ties; raincoat;footwear and headgear

16 The Subject Mark has not yet been used by the Proprietor in Singapore, although it has
been used in other countries such as the United Kingdom and Malaysia.
17 The Applicant, The Polo /Lauren Company, LP, is a limited partnership existing under
the laws of New York and is the registered proprietor in Singapore of some 51 marks
containing or consisting of the word “Polo” and/or a polo player device in various classes
including Class 9 (eyewear), Class 18 (leather goods) and Class 25 (clothing and footwear) ,namely:

-5-

-6-

-7-

-8-

(“the Applicant’s Marks”).
18 The usage of the Applicant’s Marks dates back to 1987 or earlier and the annual sales
figures in Singapore of goods bearing the Applicant’s Marks for the fiscal years 1987 to 2013
are summarised below:
Fiscal Year Ending 31 March

Amount (in excess of S$)

1987
1988
1989
1990
1991
1992
1993
1994
1995
1996
1997
1998
1999
2000
2001
2002
2003
2004
2005
2006
2007

2,250,000.00
5,630,000.00
12,860,000.00
19,460,000.00
20,400,000.00
19,500,000.00
23,300,000.00
23,000,000.00
18,850,000.00
23,310,000.00
27,500,000.00
20,000,000.00
20,200,000.00
20,000,000.00
21,000,000.00
23,000,000.00
21,580,000.00
21,570,000.00
25,000,000.00
23,000,000.00
22,000,000.00
-9-

2008
2009
2010

23,000,000.00
25,000,000.00
12,350,000.00
16,200,000.00(sub total: 489,960,000.00)
21,550,000.00
19,800,000.00
531,310,000.00

2011
2012
2013 (partial)
Grand Total

19 The Applicant had also since 1989 engaged in extensive advertising, such advertising
being conducted primarily in print media having a wide circulation in Singapore. The
approximate amounts expended in advertising and promoting the sale of products bearing theApplicant’s Marks in Singapore for the period covering the fiscal years 1989 through 2009
have been substantial too. This is summarised below:
Fiscal Year Ending 31
March
1989
1990
1991
1992
1993
1994
1995
1996
1997
1998
1999
2000
2001
2002
2003
2004
2005
2006
2007
2008
2009
Grand Total

Amount (in excess of S$)
140,000.00
100,000.00
218,400.00
274,700.00
160,600.00
287,600.00
220,200.00
381,900.00
362,300.00
200,000.00
200,000.00
200,000.00
213,000.00
134,000.00
175,000.00
200,000.00
300,000.00
300,000.00
300,000.00
260,000.00
170,000.00
4,800,700.00

20 In addition, the Applicant’s goods are also offered for sale and provided through theApplicant’s global website, www.ralphlauren.com.
21 The Applicant relies on the following earlier trade marks (“collectively the Applicant’s
Earlier Marks”) under the Similarity Ground and Well Known and Damaging Interest
Ground2:

2

Applicant’s Written Submissions at [46].

- 10 -

Applicant’s
Earlier Marks

Class

Goods

Applicant’s Device Marks
9

T9604857H(14 May 1996)
18

Eyewear and eyewear accessories, namely,
eyeglass cases, pince-nez cases, pince-nez
chains, pince-nez cords, eyeglass frames,
eyeglass cords, spectacle cases, spectacle
frames, spectacle glasses, spectacles,
sunglass cases, sunglass cords, sunglass
frames, sunglass chains and sunglasses ininternational class 9; all excluding goods
adapted for use in horse riding or theplaying of polo.
Leather and imitations of leather, andgoods made of these materials and notincluded in other classes; animal skins,
hides; trunks and travelling bags;
umbrellas, parasols and walking sticks.

T9604858F(14 May 1996)25

Jackets, shirts, polo shirts, t-shirts,
trousers, suits, slacks, sweaters, neck ties,
socks, overcoats, blazers, shorts, belts(clothing), knit shirts and shoes.

25

Men's, women's and children's clothing,namely, sweaters, shirts, including knit
shirts, dress shirts, sport shirts, polo
shirts, sweat shirts and tee shirts; jackets,
neckties, trousers, suits, slacks, ascots,bathing suits, belts (clothing), blouses,
skirts, dresses, coats, hats, caps, tuxedos,
pants, jeans, overcoats, shorts, tops, vests,
robes, hosiery, scarves, pyjamas,
underwear, kilts, mufflers, shawls;
footwear, namely shoes, boots, slippers
and athletic shoes; blazers, wristbands,
coveralls, overalls, sweat pants andsleepwear in International Class 25.

T9604861F(14 May 1996)

T9900714G(27 January 1999)- 11 -

Applicant’s Composite Mark
18

Leather and imitations of leather, andgoods made of these materials and notincluded in other classes; animal skins,
hides; trunks and travelling bags;
umbrellas, parasols and walking sticks.

T0716552B(2 August 2007)
Applicant’s Word Marks

POLO

25

Slacks, jackets; jeans and sports footwear,
all being articles of clothing; but notincluding clothing for use in horse ridingor the playing of polo.

25

All goods in Class 25 but not including
goods adapted for use in horse riding or theplaying of polo.

18

Trunks, suitcases, travelling bags, valises,
briefcases, attached cases, handbags,
purses (not of precious metals or coatedtherewith), pocket wallets; key cases andbillfolds, all in the nature of wallets;umbrellas and parasols; parts and fittings inclass 18 for all the aforesaid goods.
Spectacles, spectacle frames, lenses,
sunglasses and parts and fittings therefor.

T9100082H(7 January 1991)

POLO
T9900713I(27 January 1999)

POLO
T0716550F(2 August 2007)
9

POLO
T1108752B(1 July 2011)

MAIN DECISION

Ground of Invalidation under the Similarity Ground
22

Section 23(3)(a)(i) of the Act reads:(3) The registration of a trade mark may be declared invalid on the ground–- 12 -

(a) that there is an earlier trade mark in relation to which —(i) the conditions set out in section 8(1) or (2) apply;…
unless the proprietor of that earlier trade mark or other earlier right has consented
to the registration.
23

Section 8(2)(b) of the Act reads:(2) A trade mark shall not be registered if because —…
(b) it is similar to an earlier trade mark and is to be registered for goods orservices identical with or similar to those for which the earlier trade mark is
protected, there exist a likelihood of confusion on the part of the public.

Decision on the Similarity Ground
24 The law in relation to Section 8(2)(b) is well-established: the leading case is the Courtof Appeal’s decision in Staywell Hospitality Group v Starwood Hotels & Resorts Worldwide[2014] 1 SLR 911 (“Staywell”). In Staywell the court reaffirmed the “step-by-step” approach
which may be summarised as follows. The first element is to assess whether the respective
marks are similar. The second element is to assess whether there is identity or similarity
between the goods or services for which registration is sought as against the goods or services
for which the earlier trade mark is protected. The third element is to consider whether there
exists a likelihood of confusion arising from (or to use the words of the section: because of)the two similarities. The court made it clear that “the first two elements are assessedindividually before the final element which is assessed in the round” (Staywell at [15]). If, for
any one step, the answer is in the negative, the inquiry ends, and the opposition will fail.
These principles are equally applicable to post-registration invalidation actions based on thesame substantive provision above, such as the present case.
Comparison of Marks
25

In assessing the marks for similarity, I have taken the following principles into account:(a)

The assessment of marks similarity is mark-for-mark, without consideration ofany external matter. (Staywell at [20].)(b)

The marks are to be compared for visual, aural and conceptual similarities. Thereis no requirement that all three aspects of similarity must be made out before themarks can be found to be similar. Trade-offs can occur between the three aspectsof similarity in the marks-similarity inquiry. The three aspects of similarity are
but signposts meant to guide the inquiry and I must ultimately come to aconclusion whether the marks, when observed in their totality, are similar rather
than dissimilar. This is inevitably a matter of impression. (Staywell at [17]-[18].)- 13 -

(c)When assessing two contesting marks, I should bear in mind that the average
consumer has imperfect recollection. Therefore, the two marks should not becompared side by side and examined in detail because the person who is confused
often makes a comparison from memory removed in time and space from themarks. (Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd [2013] 2 SLR 941(“Hai Tong”) at [62(a)]). That said, the court or tribunal is entitled to have special
regard to the distinctive or dominant components of a mark, even while itassesses the similarity of the two marks as composite wholes, since those(distinctive or dominant components) tend to stand out in the consumer’s
imperfect recollection. (Staywell at [23].)(d)

The signs/marks are considered from the viewpoint of the average consumer – notan unthinking person in a hurry, but rather, a person who would exercise somecare and good sense in making his purchases. (The Polo/Lauren Co, LP Shop In
Department Store Pte Ltd [2006] SGCA 14 (“Polo (CA)”) at [34].)

Distinctiveness26 I am mindful of the Court’s guidance in Staywell at [30] that distinctiveness is a factor
integrated into the visual, aural and conceptual analysis as to whether the competing marks
are similar and it is not a separate step within the marks-similarity inquiry. However,following the approach of the Court of Appeal in Hai Tong at [26], for the purpose of
elucidating the analytical process, I will highlight it here as a separate step first before
applying my findings within the context of the mark-similarity analysis.
27 Assessment of the degree of distinctiveness of the earlier trade mark is important “inorder to determine the extent of the latitude that will be allowed to a user of features thatappear in that mark” (Hai Tong at [27]). Further, the Court of Appeal in Sarika Connoisseur
Cafe Pte Ltd v Ferrero SpA [2012] SGCA 56 said at [20]:…the “distinctiveness” of the registered trade mark is a factor to be considered in thevisual, aural and conceptual analysis to determine whether the allegedly infringing
sign and the trade mark are similar. It stands to reason that the more distinctive theregistered trade mark, the more it is necessary to show sufficient alterations to, ordifference in, the sign in order that it may not be held to be similar to the trade mark…
Conversely, the more descriptive a mark, the greater the latitude afforded to the defendant inusing words or ideas of a generic nature, even if these have some similarity to what is foundin the registered mark. The rule that proscribes impermissible similarity cannot be applied inprecisely the same manner to a mark that uses common descriptive words or devices as to one
that does not (Hai Tong at [30]).
28 As mentioned at [21], the Applicant relies on 3 types of earlier marks for thisinvalidation:(a)“POLO” (“the Word Mark”);- 14 -(b)“” (“the Device Mark”); and(c)“” (“the Composite Mark”).

29 The Proprietor submits that the Applicant’s Earlier Marks lack distinctiveness as they
are descriptive of the Applicant’s goods in Classes 9, 18 and 25. In this regard, the Proprietor
says that the word “Polo” describes a sport where players ride on horseback with long mallets
or it may refer to a kind of collared T-shirt (commonly referred to as “Polo” shirts) 3. Further,
the word “Polo” and/or a polo player device is/are commonly used and adopted as trade
marks or part thereof by many traders both internationally and locally in Singapore
particularly where it relates to goods in Classes 9, 18 and 25. The fact that there are numerous
registrations in the Register containing the word “Polo” and/or a polo player device supports
the contention that the “Polo” word in simpliciter and a polo player device are common andlack distinctiveness4. These registrations are:3
4

Proprietor’s Written Submissions at [15].
Proprietor’s Written Submissions at [16].

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30 I am unable to agree with the Proprietor that the Applicant’s Earlier Marks lackdistinctiveness. Firstly, there is no application by the Proprietor to invalidate the Applicant’s
trade marks for being devoid of distinctive character, descriptive or generic. The Applicant's
Earlier Marks must therefore enjoy a “presumption of validity” and be considered to have atleast a minimum degree of inherent distinctiveness. Secondly, even if I accept that the word

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“Polo” will be perceived by the public as referring to the game of polo, there is no evidence
that the Applicant’s goods are intended for use in horse riding or the playing of polo. In fact,
the Applicant’s specification of goods for the “POLO” word marks in Class 25 specifically
excludes goods adapted for use in horse riding or the playing of polo. As for the point that theword “Polo” may refer to a kind of collared T-shirt (commonly referred to as “Polo” shirts), I
accept that in relation to “polo shirts” and “t-shirts” the inherent distinctiveness of the WordMark is extremely low but with regard to all other goods in Classes 9, 18 and 25, I find that
the Applicant’s Earlier Marks have a normal degree of inherent distinctiveness. Considering
the fact that the word “polo” is not an invented word and a device of a polo player is not one
with a high level of imaginative content (being something that exists in reality and not an
arbitrary graphic creation), I do not think that their distinctiveness is any higher than normal.
31 I am also unable to agree with the Proprietor that the mere fact that numerous
registrations in the Register contain the word “Polo” and/or a polo player device is evidence
that the “Polo” word in simpliciter and a polo player device lacks distinctiveness. One of themost frequent arguments canvassed by applicants is that the earlier trade mark or one of its
components has low distinctive character given that there are many trade marks that consistof, or include, the element in question. Where this argument is supported only by thereference to trade mark registrations, this is not per se particularly conclusive, as it does notnecessarily reflect the situation in the market. In other words, on the basis of informationfrom the Register only, it cannot be assumed that all the trade marks have been effectively
used. It would be more helpful if the evidence could demonstrate that consumers have been
exposed to widespread use of, and become accustomed to, trade marks that include theelement in question in order to prove that this element has a low degree of distinctive
character. Regretfully, evidence of this nature was not produced in this case.
32 I am further reminded by the Applicant that in The Polo/Lauren Co LP v United States
Polo Association [2016] SGHC 32 (“USPA HC”), a case concerning the Device Mark, thesame argument was made by the defendant therein and was rejected by the Court. The
defendant in that case argued that:
The polo player in devices of trade marks is thus a common feature and is notparticularly distinctive. There is thus no reason that it should be granted an additional
layer of protection that is usually reserved for marks which are inventive and which
are technically distinctive.
However, the Court found at [36] that the mere existence of other trade marks using a polo
player device was inconclusive and found that there was no evidence that the Applicant’s
Device Mark has a lower level of distinctiveness:
I am not persuaded by the defendant’s argument. It is unclear to me as to how
Polo/Lauren 2002 supports the proposition that the Opposition Mark is lessdistinctive – the point which the judge sought to make through his observation wasthat the use of a polo player as a motif in that case in itself signified nothing in trade
mark law. There is, in my view, insufficient evidence to demonstrate that the
Opposition Mark has a lower level of distinctiveness. The mere fact that there areother registered trade marks comprising a polo player on horse-back is not necessarily
indicative of the distinctiveness of the Opposition Mark; those marks could either bedissimilar, or do not lead to a likelihood of confusion. To the extent that the defendantis suggesting that the registration of these trade marks is evidence, similar to- 17 -

Castellani, that the use of polo players in graphical devices has become commonplacein respect of eyewear, there is no such evidence before me.
33 Having examined the inherent distinctiveness of the Applicant’s Earlier Marks, I will
now proceed to examine whether any of them have acquired enhanced distinctiveness at theRelevant Date as a consequence of the use made of it. In this regard, I note that the issue
whether acquired distinctiveness can be taken into account at the mark similarity stage does
not appear to be settled law. This is beacause if the assessment of marks similarity is markfor-mark without consideration of any external matter, then it would not be permissible tolook at the actual use of the mark (via sales and promotion of products bearing the mark).
Nevertheless, I will consider acquired distinctiveness to see if it has been made out in the firstplace. If it is not made out, nothing turns upon it in any event.
34 As mentioned at [17], the Applicant has registered some 51 marks containing or
consisting of the word “Polo” and/or a polo player device in various classes including Classes
9 18 and 25 in Singapore. While the Applicant contends that it has used its marks in
Singapore since around 1987, the more pertinent issue is whether by virtue of such use, theApplicant’s Earlier Marks (and none other) have acquired enhanced distinctiveness by the
Relevant Date.
35 It is the Proprietor’s case that the Applicant’s Earlier Marks have not been used on its
own but only in conjunction with the Applicant’s other registered trade marks such as thewords “Ralph Lauren” 5 or “Ralph” 6 and accordingly the Applicant’s evidence does not showthat any of the earlier marks has acquired enhanced distinctiveness.
36 The Proprietor further reminds me that in Polo (CA), a case concerning the Word Markin Class 25, the Court of Appeal found that the mark had not acquired distinctiveness. It heldat [17]:…The appellant here had not done anything either to promote or use the mark POLO”
on its own. The mark “POLO” has always been used and linked with Ralph Lauren.
Thus, we cannot see how the appellant could claim that the word mark “POLO” hasacquired distinctiveness…
37 I am aware that the relevant date for the assessment of acquired distinctiveness in thiscase is 20 October 2011 and the decision in Polo (CA) cannot be relied on here as therelevant date there is different and the goods concerned in the present case are also wider inthat they include goods in Classes 9 and 18. I will therefore review the evidence lodged
herein independently.
38 I will first comment on the evidence generally. I start with the Applicant’s invoices7.
As the invoices show use of various signs over time, I will summarise what I see for ease ofreference.

Proprietor’s Written Submissions at [17].
Proprietor’s SD at [25].
7
Exhibited at ADV-3 of the Applicant’s 1st SD.
56- 18 -

Period

Sign appearing on invoices

1989 to March 2001
April 2001 to March 2007

April 2007 to March 2009

April 2010 to October 201239

Based on the invoices it appears as follows:(a)

The polo player device and the word “Polo” have never been used on their own
on the Applicant’s invoices;(b)

While the polo player device was used together with the words “Polo Ralph
Lauren” in the composite form, “” (“the Composite Sign”), theuse was only in the initial years and from April 2007 onwards, the polo player
device ceased to feature on the Applicant’s invoices; and(c)Other than the use of, the use of the word
“Polo” has always been accompanied by the words “Ralph Lauren”.

40

It is the Composite Sign that appears on the Applicant’s price tags8.

41

Moving on to the Applicant’s promotional materials9, my observations are as follows:(a)

The Device Mark almost never features in the text of the advertisements (asopposed to photographs of the Subject Goods on the advertisements, which I willdeal with at [45(c)]). If at all they are featured in the text, they are featured only
prior to March 1997 in the form of the Composite Sign10;(b)

A substantial portion of the materials in fact features only the words “Ralph
Lauren”, without the word “Polo” and without the polo player device;

Applicant’s 1st SD at pages 158-161, 168, 173-174, 176-177, 181-189, 190, 192-197, 199-200, 202-204, 206211, 213-222, 224. The price tags were lodged for the period before April 1997 only.
9
Exhibited in ADV-4 of the Applicant’s 1st SD. On a related note, it appears that the evidence from page 708
onwards relate to Malaysia and I have therefore not taken them into account.
10
Applicant’s 1st SD at page 613.
8

- 19 -

42(c)

Whenever the word “Polo” is used, it is almost always accompanied by the words“Ralph Lauren”. Whilst in some of these materials the word “Polo” is in larger
font than the words “Ralph Lauren”, this does not detract from the fact that they
are still used together as a composite sign; and(d)There are some incidences of use of “POLO JEANS CO.” per se (without thewords “Ralph Lauren”) in 2003 and before11 but the materials in subsequent years
do not seem to show this use anymore.

I will now move on to consider the evidence in the context of the Subject Goods.

43 In relation to the goods in Class 9 (such as eyewear), no evidence of use relating
specifically to these goods was lodged. As a result, I am unable to tell if any of the earlier
marks have even been used on Class 9 goods as of the Relevant Date, much less acquired anenhanced distinctive character.
44 In relation to Class 18 goods (such as handbags), I note from the advertisements lodgedthat the trade mark referred to on these goods is “Ralph Lauren” 12. None of the Applicant’s
Earlier Marks appear to feature anywhere on the goods.
45 In relation to Class 25 goods (such as clothing and footwear), much more evidence wastendered and my observations are:(a)

In relation to the Device Mark, whenever the Device Mark is used in the text of
the advertisements, it is always accompanied by the words “Ralph Lauren”13;(b)

The Device Mark does not appear to feature at all in the text of theadvertisements after 1990;(c)Some of the advertisements show photographs of clothing bearing the Device
Mark per se, for example, on the chest area of the clothing14. However, the morecritical issue I have to decide is whether by virtue of such use, consumers regard
the Device Mark as a badge of origin (as opposed to something else, such as,
mere decoration) and therefore it has acquired enhanced distinctiveness. Given
that there is little evidence before me of the extent of this use and the effect of
this use on consumers, I am unable to conclude that this has occurred;(d)

In relation to the Word Mark, more often than not it is used together with thewords “Ralph Lauren” 15;(e)

There are some instances of use of “Polo Jeans Co.” 16 and at at least one
advertisement showing shoes bearing the Word Mark per se 17 . But again, theApplicant’s 1st SD at pages 632, 649, 656, 657, 667 and 668 (not exhaustive).
Applicant’s 1st SD at pages 609, 611, 615 and 620.
13
Applicant’s 1st SD at pages 532, 537, 546, 556 (not exhaustive).
14
Applicant’s 1st SD at pages 532, 622, 624, 625, 628, 629, 638, 640, 643, 647,655, 663, 666, 674 (notexhaustive).
15
Applicant’s 1st SD at pages 549, 550, 552, 558, 583, 642, 647, 675 (not exhaustive).
16
Applicant’s 1st SD at pages 632 and 656 (not exhaustive).
17
Applicant’s 1st SD at page 563.
11
12

- 20 -

extent of this type of use and the effect such use has on consumers is not clear
from the evidence;(f)

In relation to the Composite Mark, “Composite Sign, “(g)”, its use is only in the form of the”; andThe invoices and price tags refer to the Composite Sign.

46 Last but not least, the Applicant’s website is www.ralphlauren.com 18 . It does notcontain the word “Polo”.
47 Having reviewed the Applicant’s evidence carefully, I come to the view that there isinsufficient evidence to show that any of the Applicant’s Earlier Marks have acquired anenhanced level of distinctiveness in relation to any of the Subject Goods.
48

The evidence lodged does not show use of the Composite Mark. Even if it may be said

that the Composite Mark is used in the Composite Sign “” (which I doubt),
the use is always accompanied by the highly distinctive words “Ralph Lauren” and there isno evidence to suggest that by virtue of such use the Composite Mark on its own, without thewords “Ralph Lauren” have acquired enhanced distinctiveness. As for the Device Mark andWord Mark, while there is some use of it per se, as mentioned at [45(c)] and [45(e)], theextent and effect of such use is not clear.
49 The bulk of the evidence shows use of the Applicant’s Earlier Marks in conjunction
with the highly distinctive words “Ralph Lauren”. Even if I accept that acquired
distinctiveness, or enhanced distinctiveness, may be achieved as a result of use of the
Applicant’s Earlier Marks in conjunction with other signs such as the Composite Sign, there
is nothing in the evidence to suggest this has occurred in the present case. The words “Ralph
Lauren” being highly distinctive are likely to feature in the consumers’ imperfect impressionof the Composite Sign. Further, having regard to the fact that average consumers tend toregard trade marks as a whole and do not usually proceed to analyse their various details, it
makes it less likely that use of the Applicant’s Earlier Marks as part of an element of theComposite Sign would have made an impression on consumers that was independent of theimpression created by the Composite Sign as a whole.
50 Finally, where a mark has never been used as a sole badge of origin, this lends weightto the inference that the trader does not depend on the mark standing alone to serve as a trade
mark (see Société des Produits Nestlé SA and another v Petra Foods Ltd and another[2016] SGCA 64 at [59]).
51 The level of distinctiveness therefore remains as I have indicated at [30]: extremely low
for the Word Mark in relation to “polo shirts” and “t-shirts” and normal with regard to allother goods in Classes 9, 18 and 25, as well as the Device Mark and the Composite Mark.

18

Applicant’s 1st SD at [13].

- 21 -

52 Bearing in mind the level of distinctiveness of each of the Applicant’s Earlier Marks, I
will now compare the marks visually, aurally and conceptually.
53 The visual, aural and conceptual similarities of the marks must be assessed by reference
to the overall impressions created by the marks, bearing in mind their distinctive anddominant components. It would be wrong to artificially dissect the trade marks, although it isnecessary to take into account the distinctive and dominant components of the marks and to
give due weight to any other features which are not negligible and therefore contribute to theoverall impressions created by the marks.
54

For ease of reference, the marks to be compared are:Applicant’s Earlier Marks

Subject MarkPOLO
55 It is settled law and not disputed by the parties that each of the earlier marks must becompared independently with the Proprietor’s mark and one cannot attempt to combine
separately registered marks and rely on them as a single composite mark. To do so would becontrary to the principle that extraneous matters cannot be taken into account in the markssimilarity stage (Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd [2015] 5
SLR 618 at [70]).
Visual Comparison
56 It has been held that the approach to be taken in assessing visual similarity is to assess
the marks in totality, without placing undue emphasis on any component, unless it iswarranted (Hai Tong at [41]) and that only after a holistic assessment of the visualcharacteristics of the two marks can the conclusion that these marks are visually similar bereached (Jamal Abdulnaser Mahmoud Al Mahamid v Global Tobacco Manufacturers(International) Sdn Bhd [2015] SGHC 42 (“Global Tobacco HC”) at [23]).
57

The Subject Mark is a composite sign comprising 3 elements:(a)

A polo player device at the top of the sign;(b)

The words “POLO CLUB” in plain font and in upper case at the bottom of thesign; and- 22 -

(c)The words “Royal County of Berkshire” in a contrasting font in the middle of thesign between the polo player device and the words “POLO CLUB”.

58 The Applicant submits that the technical distinctiveness in the Subject Mark is in thepolo player device. The words “Royal County of Berkshire” are in a very stylised script andbarely discernible and can only be read upon very close scrutiny. As for the words “POLO
CLUB”, though they are visible and pronounceable as such, they are dwarfed by the polo
player device which is much bigger by about 4-fold. Further, the words may be considereddescriptive of a polo club 19.
59 On the other hand, the Proprietor contends that technical distinctiveness lies in thewords “Royal County of Berkshire” and “POLO CLUB” which are prominently displayedand discernible20.
60 I do not agree with the Applicant that technical distinctiveness in the Subject Mark lies
only in the polo player device. In my view, the 2 textual elements in the Subject Mark arehighly distinctive technically as they are not in any way descriptive of any characteristic of
the goods. As for the point that the words “Royal County of Berkshire” and “POLO CLUB”
may only be read upon close scrutiny and are each “dwarfed” by the polo player device, thishas no bearing on technical distinctiveness but only the issue of whether these elements are
dominant in the Subject Mark.
61 I now come to the analysis of the dominant component of the Subject Mark. In carryingout this analysis, I recognise that words do not “talk” in trademarks (Hai Tong at [41]). Thatis, words in composite marks do not dominate or constitute the whole of such marks simply
because they are words. The question that has to be asked, as noted by the Court of Appeal in
Hai Tong, is whether the words are dominant on the facts of each mark.
62 In the present case, considering the size, position, font and orientation of the words“POLO CLUB”, I do not see how it may be said that the words are dwarfed by the polo
player device. In fact, I find that the presence of the polo player device reinforces thedominance or at least co-dominance of the element “POLO CLUB” as it emphasises the“Polo” portion of “POLO CLUB”. This was also the finding in the case of Hai Tong where
the Court of Appeal concluded that the textual component of the composite mark was thedominant component of the mark “” and the device component relatively
insignificant as it underscored the textual component by emphasising the “Rose” portion of“Lady Rose”.
63 With regard to the words “Royal County of Berkshire”, they may be of a stylised script,
but they are nevertheless of a good size and clearly legible. Given that the average consumer
is one who would exercise some care and a measure of good sense in making his or herpurchases, I do not think that these words would be ignored, missed or forgotten in the
consumers’ overall visual impression of the sign considering the following:
(a)
19
20

The words are in bold;

Applicant’s Written Submissions at [68].
Proprietor’s Rebuttal Submissions at [V(d)].

- 23 -

(b)
(c)
(d)
(a)

They are in a contrasting font from the words “POLO CLUB”, which causes themto stand out and catch the eye;
They occupy a central position in the sign as a whole;
They extend much more widely than the other 2 elements in the sign (comprising
4 words made up of 22 letters); andThe prominence of the words “POLO CLUB” invites attention to these words as
they put in context the name of the Proprietor’s polo club.

64 Even if it may be said that in imperfect recollection, the average consumer may notnecessarily recall the entire phrase “Royal County of Berkshire”, the fact remains that thephrase would, nonetheless, have affected his perception of the Subject Mark and his
recollection of it.
65 As a result, considering the Subject Mark as a whole, I do not agree that the 2 textual
components of the Subject Mark are negligible to the extent that they can be disregarded. In
my view, the words “Royal County of Berkshire” and “POLO CLUB” both play essential
parts in the overall impression conveyed by the Subject Mark. None of the elements - thepolo player device, the words, “Royal County of Berkshire” or the words, “POLO CLUB” are more outstanding or memorable than the others. In other words, there is no dominantcomponent in the Subject Mark. Both the device and the 2 separate lines of text are equallysignificant in the Subject Mark. Bearing in mind that it is only when other components of acomplex mark are of negligible significance, that it is permissible to make the comparison
solely on the basis of any dominant element(s) (Hai Tong at [62(b)]), the visual comparison
between the earlier marks and the Subject Mark cannot therefore be on the basis of the polo
player device or the word “Polo”. I must thus compare the Applicant’s Earlier Marks against
the Subject Mark as a whole without giving special regard to either the device or any
particular word/words in the Subject Mark.

Comparison between “

”v “

”

66 The marks under comparison share one common denominator: a device of a polo
player. The Applicant submits that there is a high degree of visual similarity between the
Subject Mark and the Device Mark21. The Proprietor however contends that the marks are notsimilar and submits that the respective parties’ polo player devices bear the following
differences:(a)

The device in the Subject Mark depicts “an inactive polo player in rest position
with mallet in vertical upright position on a stationary horse” with theApplicant’s mark adopts “an active polo player with mallet swung to the back inready-to strike position on a charging horse”; and(b)

The device in the Subject Mark is in pure black and is represented in 2-D outlook
while the device in the Applicant’s mark is in 2-tones, black and white, andrepresented in a 3-D outlook.

67 I have difficulty seeing how the claimed differences of the “stationary horse” and“inactive polo player” depicted in the Subject Mark can be sustained given that the
21

Applicant’s Written Submissions at [79].

- 24 -

positioning of the horse’s legs in the Subject Mark clearly shows the horse to be in motion
and the polo player to be raising his mallet in readiness to strike. In any event, I also find it
highly unlikely that the average consumer with imperfect recollection will be cognizant ofminor variances such as the angle of the polo player’s mallet and the running speed of thehorse, without the benefit of a side-by-side comparison and I come to the view that the device
in the Subject Mark bears similarities to the Device Mark.
68 Having said that, the assessment of similarity of two marks means more than taking justone component of a composite mark and comparing it with another mark. The High Court
stated in USPA HC at [17] that the test for visual similarity is not one of substantial
reproduction, but rather, visual similarity is to be assessed by examining each of the marks inquestion as a whole, bearing in mind their dominant and distinctive components and byreference to the overall impressions created by the mark or signs.
69

Comparing the marks as wholes, taking into account the following:(a)

The level of distinctiveness of the Device Mark is normal and the fact that it does
not enjoy a high threshold before a competing sign will be considered dissimilar
to it;(b)

The fact that the device and the 2 lines of text are equally significant in the
Subject Mark and the average consumer’s imperfect recollection of the Subject
Mark is unlikely to be dominated by the device only;(c)

The characteristics of the average consumer - not an unthinking person in a hurry,
but rather, a person who would: (a) exercise some care and good sense in making
his purchases; and (b) tend to regard trade marks as a whole and not usuallyproceed to analyse their various details; and(d)

The fact that any similarity that consumers may perceive in the devices used in
the respective marks, will be far outweighed by the greater degree of dissimilarity
in the fact that the Subject Mark contains 2 rows of text, while the Applicant’s
Device Mark has none;

I am of the view that the marks are more dissimilar than similar.

Comparison between “”v“”

70 It is trite that marks must be compared as wholes but, for a moment, I will compare theword element in the Composite Mark with the word elements in the Subject Mark. In thisregard, Ferrero SPA v Sarika Connoissuer Cafe Pte Ltd [2011] SGHC 176 ("Ferrero") at[51] affords a handy, non-exhaustive checklist:
In the case of word marks, a determination of visual similarity typically involves
looking at the (a) length of the marks; (b) structure of the marks (i.e., whether there
are the same number of words); and (c) whether the same letters are used in the marks(Ozone Community at [49], citing Bently & Sherman, Intellectual Property Law(Oxford University Press, 3rd Ed, 2009) at 865 (“Bently & Sherman”)).

- 25 -

71 Length-wise, the word element in the Composite Mark is 4-letters long, while the
Subject Mark has 30 letters in the word elements “Royal County of Berkshire” and “POLO
CLUB”. Structurally, from the perspective of "whether there are the same number of words",
the Composite Mark has only 1 word while the Subject Mark has 6. As for the issue “whether
the same letters are used in the marks”, the commonality between the Composite Mark andthe Subject Mark lies only in 1 word or 4 letters out of the 30 letters in the Subject Mark. The
word elements in the respective marks are therefore more dissimilar than similar.
72 This exercise is conducted at a high degree of granularity, but it must be borne in mind
that the objective of the above is to help ascertain whether these marks can be said to bevisually similar as wholes. Comparing the marks as wholes and taking into account thefollowing:(a)There is no dominant component in the Subject Mark;(b)

There is no dominant component in the Composite Mark;(c)

The level of distinctiveness of the Composite Mark is normal and does not enjoya high threshold before a competing sign will be considered dissimilar to it;(d)

The guidance of the High Court in The Polo /Lauren Co, LP v Shop In
Department Store Pte Ltd [2005] SGHC 175 (“Polo HC”) at [26] that “… Incases where there is a common denominator, it is important to look at thedifferences between the mark and the sign in order to decide whether thechallenged sign has been able to distinguish itself sufficiently andsubstantially…”;(e)

The average consumer is unlikely to notice the similarities between the respective
marks without also noticing that the Subject Mark contains the additional words“Royal County of Berkshire” and “CLUB”; and(f)

Even with imperfect recollection, it is likely the average consumer would still
remember that the Subject Mark is more complex and has a much longer textual
component than the Composite Mark;I come to the view that the marks have a low degree of visual similarity.

Comparison between “POLO” v “”73 In respect of the Word Mark, the Applicant submits that there is visual similarity, albeit
to a low degree22. The similarity lies in the word “Polo” which is the first word in one of the
3 components of the Subject Mark, namely, “POLO CLUB”.
74 I am unable to agree with the Applicant. In my view, the following visual differences
between the 2 marks would be obvious to the average consumer:

22

Applicant’s Written Submissions at [119].

- 26 -

(a)The additional device component in the Subject Mark;(b)

The additional words “Royal County of Berkshire” in bold and stylised fontwhich causes them to stand out and catch the eye; and(c)

The word “Polo” is linked with the word “Club”.

75 The above differences far outweigh any visual similarity due to the coincidence of theword “Polo”. Considering the fact that the word “Polo” is merely a word in one of the 3components of the Subject Mark, I cannot see how the word “Polo” would dominate theconsumers’ overall impression of the Subject Mark.
76

As such, I see no visual similarity between the Word Mark and the Subject Mark.

Aural Comparison
77 With regard to aural comparison, it is clear from Staywell (at [31] and [32]) that there
are two possible approaches. One approach is to consider the dominant and distinctive
components of the marks (“the Dominant Component Approach”). The other approach which
does not involve considering the dominant components is to undertake a quantitative
assessment as to whether the competing marks have more syllables in common than not (“theQuantitative Assessment Approach”).

Comparison between “

”v “

”

78 The Applicant submits that the Device Mark is most likely to be verbalised as “poloplayer” and that the Subject Mark too may also be verbalized as a “polo player” mark giventhat the polo player device is the dominant element 23.
79 I am unable to agree with the Applicant. In my view, no aural comparison may beundertaken for this set of marks as the Device Mark, being a device only mark has no verbal
element to speak of. At the very most, its visual or conceptual content can be describedorally. The ‘meaning’ that the image evokes, or its ‘description’, will be assessed visually andconceptually but they will not be subject to a phonetic comparison or it will only repeat theoutcome of the visual or conceptual comparison respectively, where these elements havealready been assessed. This view was also expressed by the Honourable Justice Lee Seiu Kin
in Polo HC at [22] where he said:… Whether a mark that is found to have no aural component may nonetheless be foundto be aurally similar to another mark does not appear to be settled law; for example, inRovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd [2014] SGIPOS 10, theprincipal assistant registrar found that there could be no aural similarity given that themark which the opponent sought to rely on had no aural component. This aspect of thedecision was undisputed and was therefore not disturbed in the appeal to the High
Court: Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd [2015] 5 SLR 618
at [85]. Personally, I have my reservations. To find aural similarity where no aural

23

Applicant’s Written Submissions at [89].

- 27 -

component exists seems to allow for visual or conceptual similarity to be accounted forwithin the assessment of aural similarity.
80 What this means is that this aspect of comparison results in a neutral conclusion rather
than the marks are aurally dissimilar.
81 Before I move on, I would like to comment on a point that the Applicant brought up. This
relates to the relevance of the fact that on the Register, the Registrar has commonly described thedevice in both the Applicant’s polo player device marks as well as the Subject Mark withterms containing the words “polo-player”, as shown below:
Applicant’s
Trade Marks
T9604857H
T9604858F
T0716552B
T9900714G
T9604861F

Device Description

Subject Mark

Device Description

Polo-player
Man horse jockey
Polo-player
Polo-player
Polo-player

T1114738Z

Polo-player horse

82 The “Device Description” is a field found under the heading “Mark Index”. Markindexing is merely an administrative function undertaken by the Registry to describe theelements that make up a trade mark. The purpose is to facilitate searches of marks from theRegister. Where the trade marks consist of words, the indexing process is fairly straightforward and the words in the mark will be entered into the field “Words in Mark” under theheading “Mark Index”. However, where the trade marks contain or consist of devices, theRegistrar will have to describe the device in the field “Device Description”. In order tominimise subjectivity and inconsistency, the terms which may be used for indexing arelimited to those in the Registrar’s “Glossary of Device Descriptors”. As such, the way theRegistrar indexes devices in trade marks has no effect whatsoever on the nature of the trade
mark or the applicant’s rights in it and is in no way indicative of how it is perceived by theaverage consumer.

Comparison between “”v“”

83 The Applicant submits that both the Composite Mark and the Subject Mark would be
verbalised as “polo player” 24 and therefore this set of marks should also be found to beaurally similar.
84 For the same reasons I have given above at [79], I am unable to agree that either theComposite Mark or the Subject Mark would be verbalised as “polo player” as that is not theaural component in the marks.
85 In my view, the Composite Mark would be verbalised as “Polo” as that is the textual
element in the mark. As for the Subject Mark, the aural component in the mark are the words“Royal County of Berkshire” and “POLO CLUB”. The question is how the consumer would
verbalise this 10-syllable mark. If the average consumer verbalises it as “Royal County of
24

Applicant’s Written Submissions at [111].

- 28 -

Berkshire Polo Club”, applying the Quantitative Assessment Approach, the marks are moredissimilar than similar as they have 2 syllables in common and 8 which are not.
86 Even recognising as the High Court did in Han’s (F & B) Pte Ltd v Gusttimo World
Pte Ltd [2015] 2 SLR 825 ("Han’s") that it may be doubtful that the average consumer would
make constant reference to a long phrase every time he refers to it, I am still of the view thatthe marks are more dissimilar than similar aurally. In coming to this decision, I consider thatfrom the aural perspective, the dominant and distinctive element in the Subject Mark is the
textual component “Royal County of Berkshire”. This is so for several reasons:(a)

In terms of size of the words, the words “Royal County of Berkshire” are not sosmall that they will not be articulated by the consumer or be regarded as
subsidiary as was found in Han’s in relation to the words “Cuisine of Naniwa”
relative to the word “HAN”;(b)

In terms of position, when articulated, the words “Royal County of Berkshire”
come before the words “POLO CLUB” and consequently, these words are lesslikely to be forgotten in a consumer’s imperfect recollection than the words
towards the end of the phrase;(c)

In terms of the role of the words, the words “POLO CLUB” are not particularly
distinctive from the aural perspective as it does not say what the name of the poloclub is.

87 As a result, whether applying the Dominant Component Approach or the Quantitative
Assessment Approach, the marks are aurally more dissimilar than similar.

Comparison between “POLO” v “”88 The Applicant submits that the Word Mark is aurally similar to the Subject Mark as
both marks may be referred to as “Polo” 25.
89 While I agree that the Word Mark would be referred to as “Polo”, for the reasons stated
at [85] and [86], I am of the view that the Subject Mark is more likely to be referred to as“Royal County of Berkshire Polo Club” or “Royal County of Berkshire” for short. Again,
whether applying the Dominant Component Approach or the Quantitative Assessment
Approach, the marks are aurally more dissimilar than similar.
Conceptual Comparison
90 With regard to conceptual similarity, the inquiry is to “uncover the ideas that lie behind
and inform the understanding of the mark as a whole” (Staywell at [35]).

25

Applicant’s Written Submissions at [119].

- 29 -

Comparison between “
91

”v “

”, “

”v“

” and “POLO” v “”I will deal with all 3 sets of marks together under this heading.

92 The Applicant submits that the idea connoted by the Applicant’s Earlier Marks and the
Subject Mark are conceptually similar in that they all convey the idea of a game of polo andtherefore, there is a substantial degree of conceptual similarity 26 . In support of this the
Applicant relies on the decision of this tribunal in The Polo/Lauren Company, L.P. v UnitedStates Polo Association [2015] SGIPOS 10 (“USPA”) where the IP Adjudicator found thatthe double horseman mark, “” was conceptually identical to the Applicant’s
Device Mark as both conveyed the idea of the game of polo.
93 While I agree with the Applicant that the Applicant’s Earlier Marks convey the idea ofa game of polo, I do not agree that this is the idea connoted by the Subject Mark. I also do notfind that USPA assists the Applicant. In USPA, the textual component in the mark wasmerely “USPA” and not “U.S. Polo Association” and no evidence was led to show that the
public in Singapore was aware that “USPA” is the acronym for “U.S. Polo Association”. Thatbeing the case, it was found that the concept of an association would unlikely come to mind
and the only concept conveyed by the mark was the idea of the game of polo. In this case,however, the textual components in the Subject Mark are “Royal County of Berkshire” and“POLO CLUB”. A meaningful concept is clearly conveyed by these words, namely, a nameof a polo club and the place where the club is situated. This is so even if the consumer is not
sure where Berkshire is located.
94 I bear in mind the Applicant’s submission that the idea of a polo club situated within acertain geographical location does not change its basic meaning, which evokes the idea of thegame of polo. However, given the Court of Appeal’s exhortation in Staywell that greater careis needed in considering what the conceptually dominant component of a composite mark is,
because the idea connoted by each component might be very different from the sum of its
parts (Staywell at [35]), I do not think it would be correct for me to focus on the idea of thegame of polo without considering the ideas given by the other elements of the mark. Taken
together with the other elements of the mark, namely, the words “Royal County of Berkshire”
and “POLO CLUB”, I am of the view that the Subject Mark evokes the idea of a place or
location or, also, a particular polo club.
95 All things considered, overall, I find the marks to be conceptually more dissimilar thansimilar.
Conclusion on Similarity of Marks
96 I now consider whether the respective marks, "when observed in their totality, aresimilar rather than dissimilar", noting the Court of Appeal's rejection of the suggestion that"any modicum of similarity would compel the court to make a finding of marks-similarity" at[19] of Staywell.
26

Applicant’s Written Submissions at [91], [111] and [119].

- 30 -

Comparison between “

”v “

”

97 I have found that the respective marks are (a) visually more dissimilar than similar; (b)aurally neutral; and (c) conceptually more dissimilar than similar. Overall, my finding is thatthe marks are more dissimilar than similar.

Comparison between “”v“”

98 I have found earlier that the composite marks are (a) visually similar to a low degree;(b) aurally more dissimilar than similar; and (c) are conceptually more dissimilar than similar.
Bearing in mind that "trade-offs can occur between the three aspects of similarity in themarks-similarity inquiry" ([18] of Staywell), and that a finding of similarity of marks can bemade even though not all three aspects of similarity are established, I find that overall there isa low degree of similarity between the marks.

Comparison between “POLO” v “”

99 My finding earlier on this set of marks is that they are (a) visually dissimilar; (b)aurally more dissimilar than similar; and (c) conceptually more dissimilar than similar.
Overall, my finding is that the marks are dissimilar rather than similar in their totality.
100 The similarity of the competing marks is a “threshold requirement that had to besatisfied before the confusion inquiry is undertaken” (Staywell at [15]). Given that thethreshold requirement has been met for the Composite Mark, I will go on to consider the
likelihood of confusion under Section 8(2)(b) in relation to this mark which is registered onlyin Class 18.
101 As for the Device Mark and the Word Mark, the threshold requirement has not been met
and this is enough to dispose of the matter in favour of the Proprietor.
Comparison of Goods
102 The Applicant submits that there is identity and similarity of goods between the
Applicant’s Earlier Marks and the Subject Mark. The identical goods are indicated in bold
below:Class 18
Specification
of
Goods
in
Applicant’s
Composite
Mark(Registration No. T0716552B)
Leather and imitations of leather,and goods made of these materials
and not included in other classes;
animal skins, hides; trunks and- 31 -

Specification of Goods in Subject
Mark
Leather and imitations of leather,and goods made from thesematerials and not included inother classes; animal skins, hides;

travelling bags; umbrellas, parasols trunks and travelling bags;
and walking sticks.
umbrellas, parasols and walking
sticks; whips, harnesses andsaddlery, articles of luggage,suitcases, briefcases, tote bags,
work bags, toiletry bags, waist
bags, sling bags, shoe bags, schoolbags, overnight bags, jewellery
bags (empty), gym bags, clutchbags, bags for clothes, bags madeof leather, bags made of imitation
leather, handbags, shoulder bags,
purses, wallets, shopping bags, suitcarriers, attache cases, rucksacks,
holdalls, pouches [bags].

103 The Proprietor does not dispute that there is similarity in the goods 27. In my view thegoods are not just similar but at least for the goods indicated in bold, they are also identical.
For reasons of procedural economy, I will not undertake a full comparison of all the goods.
Instead I will first assess the invalidation in relation to the items in bold which are obviously
identical to those covered by the earlier trade marks. If the invalidation fails where the goods
are identical, it follows that it will also fail where the goods are only similar.
Likelihood of Confusion (with the Applicant’s Composite Mark)104 There are at least two types of confusion under Section 8(2)(b) of the Act. The first iswhere the consumer mistakes one mark for another. The second is where consumers may
perceive that the contesting marks are different, but may yet remain confused as to the origin
which each mark signifies, and may perceive that goods or services of both marks emanatefrom the same source or from sources that are economically linked or associated (see Hai
Tong at [74]). The Court of Appeal, nonetheless, recognised at [75] that confusion in thesense of “mere association” is not enough. This means that “it is not sufficient that therelevant segment of the public would recognise or recollect similarities between thecontesting marks if there is no likelihood of confusion as to origin ensuing”. Similar views
were also expressed by the Court of Appeal in City Chain Stores (S) Pte Ltd v Louis Vuitton
Malletier [2010] 1 SLR 382 (“City Chain”) at [58].
105 Further, in Sarika, the Court of Appeal said that the test to be adopted in determining
likelihood of confusion is whether a substantial portion of the relevant public will be
confused. In this regard, the Court of Appeal also said in Sarika (at [57]) that:… the essence of this requirement is that there must not be an insubstantial number ofthe relevant public being confused. This standard is above de minimis and must be
appreciable, though it is not necessary to show that a majority of the public is confused.
It is insufficient, however, if only a “single member” of the relevant public is confusedor if only a “very small and unobservant section” is confused …

27

Proprietor’s Written Submissions at [24.4].

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106 In assessing the likelihood of confusion, certain ‘extraneous factors’ may be taken into
account, whereas others cannot (see Staywell at [63]–[93]).
(i)

Factors Relating to the Impact of Marks-Similarity on Consumer Perception

The degree of similarity of the marks
107 I have held at [98] that overall there is a low degree of similarity between the Composite
Mark and the Subject Mark. This factor in the consideration of likelihood of confusion
therefore lies in the Proprietor's favour – "Clearly, the greater the similarity between themarks, the greater the likelihood of confusion" ([96] of Staywell) and conversely, the lesser
the similarity between the marks, the lower the likelihood of confusion.
The reputation of the marks
108 The Subject Mark has not been used in Singapore and does not appear to have areputation in Singapore. As for the Composite Mark, I have found at [48] that there has beenno use of the Composite Mark . Even if it may be said that the Composite Mark, “” isused in the form of the Composite Sign, “” (which I very much doubt), theuse is always accompanied by the highly distinctive words “Ralph Lauren” and there is noevidence to suggest that by virtue of such use, the Composite Mark on its own, without thewords “Ralph Lauren”, have acquired a reputation.
109 The Applicant submits that the fact that there are no less than 51 marks which containor consist of the word “Polo” and/or a polo player device is evidence that the word “Polo” andthe polo player device are truly essential features of the Applicant’s Marks and indispensable
components of the Applicant’s family of marks. As a result, members of the public in
Singapore have come to associate marks containing such features with the Applicant and noother 28.
110 I cannot agree with the Applicant that the mere fact that the Applicant has many
registrations on the Register with the word “Polo” and/or a polo player device goes to showthat consumers associate these components with the Applicant. It is the Applicant’s use intrade that matters and which is capable of having an effect on consumer perception.
111 Nevertheless, even if I take into account the Applicant’s use in trade of a variety ofmarks containing the word “Polo” and/or a polo player device, there is nothing in theevidence to suggest that by virtue of such use, customers have come to associate marks
containing such features with the Applicant and no other. Without evidence that this has
occurred, I cannot make such a finding, especially in light of the evidence that the use isalmost always accompanied by the highly distinctive words “Ralph Lauren”.
112 In any event, the authorities are clear that “mere association” in itself is not a sufficientbasis for concluding that there is a likelihood of confusion. The Court of Appeal said in Hai
Tong at [75]:28

Applicant’s Written Submissions at [11].

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However, the “mere association” by the relevant segment of the public of the earlier
registered mark with the later allegedly infringing sign based on their similar use is notin itself a sufficient basis for concluding that there is a likelihood of confusion in theabsence of any possibility of misapprehension as to the origin of the goods or services
concerned (see City Chain ([17] supra) at [58]). Put another way, it is not sufficient thatthe relevant segment of the public would recognise or recollect similarities between thecontesting marks if there is no likelihood of confusion as to origin ensuing.
113 This factor is therefore neutral. It does not increase the likelihood of confusion or
reduce it.
The impression given by the marks and the possibility of imperfect recollection of the marks
114 The Applicant submits that the dominant feature of the Subject Mark is the polo player
device and as such the impression given by both marks is that they originate from the same
source or at the very least are somewhat related 29.
115 However, given my finding:(a)

At [51] that the distinctiveness of the Composite Mark is of a normal level;(b)

At [65] that the polo player device is not the dominant feature in the Subject Mark(there being no dominant feature); and(c)

At [94] that the Subject Mark as a whole (which includes the words “RoyalCounty of Berkshire” and “POLO CLUB”) evokes the idea of a place or alocation or, also, a particular polo club;

I am of the view that there is insufficient basis to find that imperfect recollection of the marks
gives rise to a likelihood of confusion.
Factors Relating to the Impact of Goods-Similarity on Consumer Perception
The normal way in, or the circumstances under, which consumers would purchase goods ofthat type
116 Generally, the goods concerned here (such as handbag, briefcase, travelling bag, wallet)
may be bought from brick-and-mortar shops or on the Internet.
117 When such goods are purchased from a brick-and-mortar shop, customers canthemselves choose the items they wish to buy or be assisted by the sales staff. Whilst oral
communication in respect of the product and the trade mark is not excluded, the choice of theitem to buy is generally made visually. Accordingly, the visual aspect plays an important rolein the assessment of likelihood of confusion. However, I do not discount that aural
considerations may also play a part, including as word of mouth recommendations, whether ina shop or elsewhere. Nevertheless, even when acting on a recommendation, the purchaser isunlikely to complete the selection process without sight of the goods, at which point the trade
mark is likely to be visible.
29

Applicant’s Written Submissions at [102(i)].

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118 If bought from the Internet, consumers would only perceive the trade marks visually.
Under such circumstances, the textual content is also important as one would have to enter the
text of the mark into the address bar or search engine in order to get to the desired website(Hai Tong at [53]). As such, the element “Royal County of Berkshire” would have asignificant impact on the consumer and this reduces the likelihood of confusion.
Whether the products are expensive or inexpensive items
119 The Proprietor submits that the Applicant’s goods are (1) “high end and pricey” and (2)“sold in exclusive stores located in up-market exclusive boutiques in prime shopping areas”30.
I do not accept these submissions. Firstly, there is no evidence adduced by the Proprietor insupport of these contentions. Secondly, it is clear from Staywell that it is impermissible toconsider extraneous factors relating to a trader’s superficial marketing choices.
120 Accordingly, the disparity in the price range (if any) of the goods covered by theparties’ competing marks are factors which are not inherent in the goods themselves but are
the product of superficial trading choices and cannot be taken into account in the confusion
inquiry. This point was very succinctly put by the learned IP Adjudicator in USPA, in thecontext of the price of eyewear, as follows:
108 Thus, when determining the degree of care that the average consumer will pay
when purchasing eyewear, it is inappropriate to consider if the Opponents’ and/or the
Applicants’ eyewear are expensive or inexpensive items. The reference point shouldbe the normal or average price of eyewear as a type or category of goods. For
example, cars are expensive goods whereas erasers are inexpensive goods, and hence
the degree of attention and care that goes into buying a car would be greater than thatwhich goes into buying an eraser. This is what the Court of Appeal meant when it
said, “The price of the type of goods being sold is distinct from the issue of pricedisparity between the parties’ products.” (Staywell at [96(b)], emphasis added).
121 So what is the normal or average price of goods of this type? The Applicant submits
that being non-luxury items, they are inexpensive goods as compared to houses and cars.
They would require less care and attention from the average consumer, and point towards agreater likelihood of confusion.
122 In my view, goods of this type vary widely in quality and price. Whilst certainly not as
expensive as houses and cars, such goods are also not so cheap that one would buy themwithout putting in at least some thought into the process. To my mind, when selecting items
such as wallets and bags, the average consumer will pay attention to considerations such assize, style, colour, material, workmanship and cost. Overall, the average consumer is likely to
pay a medium degree of attention to the selection of goods of this type and therefore, more
likely than not, would notice the differences between the marks.
The nature of the goods and whether they would tend to command a greater or lesser degreeof fastidiousness and attention on the part of prospective purchasers
123 The Applicant submits that the goods are ordinary and common. They are not luxury
items and at most may only be termed as fashionable goods.
30

Proprietor’s Written Submissions at [24.3.4(e)(v)] and [24.5(c)].

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124 I do not disagree with the Applicant but I do not see that these indicate that a lesser
degree of fastidiousness and attention would be paid to the purchase of such goods either. In
fact, to my mind, the goods being fashionable items and highly personal in nature, are not
likely to be purchased in a hurry. I think that at least a medium level of attention would be
paid to ensure that the goods meet the user’s needs, for example in terms of size, colour andstyle. They may also entail the purchaser trying the item for suitability, inspecting the goods
to see the material and checking out the compartments of the bag or luggage. In this regard,
this factor again shows that consumers would, more likely than not, notice the differences
between the marks.
The likely characteristics of the relevant consumers and whether they would or would nottend to apply care or have specialist knowledge in making the purchase
125 The average consumer in Singapore has been described as literate, educated, exposed to
the world and unlikely to be easily hoodwinked (McDonald's Corp v Future Enterprises Pte
Ltd [2005] 1 SLR(R) 177 at [64]).
126 Although the goods concerned are used widely across segments of the public and theconsumers may not have specialist knowledge, they are nevertheless still likely to apply asufficient level of care to ensure that they buy what they need and what they are looking for.
In respect of goods in Class 9, the High Court in USPA HC said at [43]:…As the [IP] Adjudicator noted, eyewear is not purchased on a regular basis. This
type of goods is highly personal and is not something that would be purchased in ahurry but rather, would involve a high level of attention being paid by the
consumer…eyewear is likely to be purchased on a myriad of factors including not justcomfort but also its appearance, any purchase would likely entail a detailed visualinspection of the eyewear.
127 Similarly, for the goods concerned here, which are not just fashionable items but
intended to serve a function as well, consumers are likely to purchase them only after visuallyinspecting them and, as such, are more likely than not to notice the differences between themarks.
Whether the transactions are routine or infrequent
128 The goods concerned, inter alia, handbags, briefcases, travelling bags, wallets, are noteveryday purchases like consumables or daily essentials for everyday living. They are notitems that are bought routinely and are more likely to be carefully selected, with consequent
greater attention being paid to the trade marks used on those goods. This reduces thelikelihood of confusion.
Conclusion on Likelihood of Confusion
129 Taking all the above factors into account, I find that even allowing for the identity of
the goods and taking into account the doctrine of imperfect recollection, the fact that:(a)(b)

there is only a low degree of similarity between the marks;
a medium level of attention will be paid by consumers when purchasing such
goods; and- 36 -

(c)goods of this type are usually bought after a visual inspection of the goods or fromthe Internet;

there is no likelihood of confusion arising, whether it be confusion as to origin from the same
source or confusion as to the origins of goods bearing the respective marks being
economically linked. Even if there is some possibility of initial interest confusion between themarks, it is clear from Staywell at [116] that initial interest confusion does not constituteconfusion for the purpose of Section 8(2) of the Act. This element is thus not made out andthe ground of invalidation under the Similarity Ground therefore fails.
Ground of Invalidation under the Well Known and Damaging Interest Ground
130 Section 8(4)(a) read with 8(4)(b)(i) of the Act reads:
8.—(4) Subject to subsection (5), where an application for registration of a trade
mark is made on or after 1st July 2004, if the whole or an essential part of the trade
mark is identical with or similar to an earlier trade mark, the later trade mark shallnot be registered if —(a) the earlier trade mark is well known in Singapore; and(b) use of the later trade mark in relation to the goods or services for which
the later trade mark is sought to be registered —(i) would indicate a connection between those goods or services and the
proprietor of the earlier trade mark, and is likely to damage the interestsof the proprietor of the earlier trade mark…
Decision on ground of invalidation under the Well Known and Damaging Interest Ground
131 Under this ground, the Applicant has the burden of establishing the following:
(a)
(b)
(c)
(d)

The whole or essential part of the Subject Mark is identical with or similar to theApplicant’s earlier trade mark;The Applicant’s earlier trade mark is well known in Singapore;
Use of the Subject Mark in relation to the goods claimed would indicate aconnection with the Applicant; andUse of the Subject Mark is likely to damage the Applicant’s interests.

132 The earlier trade marks relied upon under this ground are the same as those relied upon
for the ground of invalidation under the Similarity Ground.
Similarity of Marks
133 The High Court in Rovio (at [146]) held that there was no difference between thesimilarity of marks comparison in Section 8(2)(b) and Section 8(4) of the Act. I have dealt
with the issue of marks-similarity earlier under Section 8(2)(b) and found as follows: (a) inrespect of the Device Mark and the Word Mark, they are more dissimilar than similar to the
Subject Mark; and (b) in respect of the Composite Mark, there is a low degree of similarity to
the Subject Mark.

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134 The inquiry therefore ends here in respect of the Device Mark and the Word Mark, andI will proceed to analyse the other elements under this ground in respect of the Composite
Mark.
Whether the Applicant’s Composite Mark is Well Known in Singapore
135 For the avoidance of doubt, the issue here is not whether the Applicant’s Composite
Sign, ““” is well known in Singapore but whether the Composite Mark,”, is.

136 Given my finding earlier at [48] that the evidence does not show any use of theComposite Mark but only, at best, use of “”, I have difficulty finding that itis only the Composite Mark on its own that is well known to the relevant sector of the publicin Singapore. This is simply not borne out by the evidence.
137 Having found (on the evidence adduced by the Applicant) that the Applicant’s
Composite Mark is not well known in Singapore, technically, I need not go on to consider
whether the use of the Subject Mark in relation to the Subject Goods would indicate aconnection between those goods and the Applicant, and is likely to damage the interests of
the Applicant. However, in case I am wrong, I will proceed to consider the next element.
Confusing Connection
138 In relation to this element, it has been settled by the Court of Appeal in Sarika at [76][77], that implicit in this requirement is that a likelihood of confusion must be shown inrelation to the connection between the goods of the Proprietor and the Applicant.
139 I have concluded at [129] that there is no reasonable likelihood of confusion arising inthis case. For the same reasons that led me to arrive at that conclusion, I am of the view that a
confusing connection has not been established by the Applicant.
140 Thus even if I am wrong in finding that the Composite Mark is not well known in
Singapore, this ground would still fail on the basis that a confusing connection is not madeout.
Conclusion on ground of invalidation under Well Known and Damaging Interest Ground
141 The ground of invalidation under the Well Known and Damaging Interest Groundtherefore fails.
Ground of Invalidation under the Passing Off Ground
142 Section 8(7)(a) of the Act reads:
A trade mark shall not be registered if, or to the extent that, its use in Singapore isliable to be prevented —- 38 -

(a) by virtue of any rule of law (in particular, the law of passing off) protecting an
unregistered trade mark or other sign used in the course of trade.
…
Decision on the Passing Off Ground
143 The Court of Appeal in Singsung Pte Ltd v LG 26 Electronics Pte Ltd (trading as L S
Electrical Trading) [2016] SGCA 33 (“Singsung”) set out the legal framework for the tort ofpassing off at [26]-[28] as follows:
26 The basic principle undergirding the law of passing off is that a trader should
not sell his or her goods on the pretext that they are the goods of another trader. There
are two oft-quoted formulations of the tort of passing off. The first is found in Lord
Diplock’s speech in Erven Warnink Besloten Vennootschap and another v J Townend& Sons (Hull) Ltd and another [1979] 1 AC 731 (“Advocaat”) at 742 where Lord
Diplock stated five characteristics of a cause of action in passing off, namely: (1) amisrepresentation (2) made by a trader in the course of trade, (3) to prospective
customers of his or ultimate consumers of goods or services supplied by him, (4)which is calculated to injure the business or goodwill of another trader (in the sensethat this is a reasonably foreseeable consequence) and (5) which causes actual damage
to a business or goodwill of the trader by whom the action is brought or (in a quia
timet action) will probably do so.
27 The second formulation is the “classical trinity” stated by Lord Oliver ofAylmerton in Reckitt & Colman Products Ltd v Borden Inc and others [1990] WLR
491 (“JIF Lemon”) at 499:
… The law of passing off can be summarised in one short general proposition– no man may pass off his goods as those of another. More specifically, it may
be expressed in terms of the elements which the plaintiff in such an action has
to prove in order to succeed. These are three in number. First, he must
establish a goodwill or reputation attached to the goods or services which hesupplies in the mind of the purchasing public by association with theidentifying “get-up” (whether this consists simply of a brand name or a tradedescription, or the individual features of labelling or packaging) under which
his particular goods or services are offered to the public, such that the get-up isrecognised by the public as distinctive specifically of the plaintiff’s goods orservices. Secondly, he must demonstrate a misrepresentation by the defendant
to the public (whether or not intentional) leading or likely to lead the public tobelieve that goods or services offered by him are the goods or services of theplaintiff. Whether the public is aware of the plaintiff’s identity as the
manufacturer or supplier of the goods or services is immaterial, as long as they
are identified with a particular source which is in fact the plaintiff. … Thirdly,
he must demonstrate that he suffers or, in a quia timet action, that he is likely
to suffer damage by reason of the erroneous belief engendered by the
defendant’s misrepresentation that the source of the defendant’s goods orservices is the same as the source of those offered by the plaintiff.
28 Both Lord Diplock’s five characteristics in Advocaat and Lord Oliver’s
reformulation in JIF Lemon have found expression in the judgments of our courts- 39 -

(see, for example, Novelty Pte Ltd v Amanresorts Ltd and another [2009] 3 SLR(R)216 (“Novelty”) at [36]). It has been suggested in a number of cases that there is nodifference between these formulations, and that the main elements of the tort ofpassing off are encapsulated in the classical trinity of goodwill, misrepresentation anddamage (see for example, Novelty at [37] and Nation Fittings (M) Sdn Bhd v
Oystertec plc and another suit [2006] 1 SLR(R) 712 (“Nation Fittings”) at [148]). We
accept this, by and large, as the correct position. However, we also agree with Prof
Wadlow’s view that Lord Diplock’s five characteristics, focusing as they do on theissue of misrepresentation and damage, “probes more deeply into the inwardness ofthe tort” (Christopher Wadlow, The Law of Passing-Off: Unfair Competition by
Misrepresentation (Sweet & Maxwell, 4th Ed, 2011) (“Wadlow on Passing Off”) at
para 1–027). The essence of passing off – that no person is permitted to steal
another’s trade by deceit – must not be forgotten. What the tort seeks to protect is not
the plaintiff’s use of a mark, name or get-up per se; rather, the tort seeks to preventthe defendant from causing damage to the plaintiff by committing an actionable
misrepresentation.
144 With the above in mind, I examine the elements of passing off in turn.
Goodwill
145 The Court of Appeal in Singsung clarified the nature of goodwill at [33]-[34] asfollows:
33 The goodwill relevant to a passing off action is not goodwill in the mark, logo or
get-up (CDL Hotels International Ltd v Pontiac Marina Pte Ltd [1998] 1 SLR(R) 975(“CDL Hotels”) at [45]). Instead, the tort of passing off protects a trader’s relationshipwith his customers. As was stated by Lord Parker of Waddington in AG Spalding &Bros v A W Gamage Ld (1915) 32 RPC 273 at 284:
There appears to be considerable diversity of opinion as to the nature of theright, the invasion of which is the subject of what are known as passing off
actions. The more general opinion appears to be that the right is a right ofproperty. This view naturally demands an answer to the question – property inwhat? Some authorities say property in the mark, name, or get-up improperly
used by the defendant. Others say, property in the business or goodwill likely
to be injured by the misrepresentation. Lord Herschell in Reddaway v Banham(LR (1906) AC 139) expressly dissents from the former view; and if the right
invaded is a right of property at all, there are, I think strong reasons forpreferring the latter view. …
34 In our judgment, goodwill, in the context of passing off, is concerned withgoodwill in the business as a whole, and not specifically in its constituent elements,
such as the mark, logo or get-up that it uses (see Lifestyle 1.99 Pte Ltd v S$1.99 Pte
Ltd (trading as ONE.99 SHOP) [2000] 1 SLR(R) 687 (“Lifestyle 1.99”) at [20]–[24];Wadlow on Passing Off at paras 3–003 and 3–004; James Mellor QC et al, Kerly’s
Law of Trade Marks and Trade Names (Sweet & Maxwell, 15th Ed, 2011) (“Kerly’s
Law of Trade Marks and Trade Names”) at para 18–100). Goodwill does not exist on
its own, but attaches to a business in the jurisdiction and is manifested in the custom
that the business enjoys: CDL Hotels at [46]. Goodwill may be proved by evidence of- 40 -

sales or of expenses incurred in promoting the goods and services in association withthe mark, brand or get-up which they bear (see SPGA at [22]).
146 There is no dispute that the Applicant operates a business and no real dispute that thebusiness has acquired sufficient goodwill to justify protection under the law of passing off.
The issue between the parties is whether a polo player device and/or the word “POLO” isdistinctive of that business.
Misrepresentation
147 There are 2 essential components in the element of misrepresentation: amisrepresentation made by the Proprietor, and confusion or likelihood of confusion caused bythis misrepresentation (see also Law of Intellectual Property of Singapore (Sweet & Maxwell,
2014 Rev Ed) by Professor Ng-Loy Wee Loon (“Law of Intellectual Property of Singapore”)
at [18.0.1]).
148 The Court of Appeal in Singsung also clarified at [38] that an actionable
misrepresentation mandates the threshold requirement that the Applicant’s mark or getup
must be distinctive.
38 In our judgment, the issue of distinctiveness is best understood as a thresholdinquiry in the context of determining whether the defendant has committed an
actionable misrepresentation. Simply put, if a mark or get-up is not distinctive of theplaintiff’s products or services, the mere fact that the defendant has used
something similar or even identical in marketing and selling its products orservices would not amount to a misrepresentation that the defendant’s products orservices are the plaintiff’s or are economically linked to the plaintiff…
(Emphasis mine)
149 I have examined the Applicant’s evidence of use earlier in the context of acquired
distinctiveness. I have no doubt that it shows that the Composite Sign “” isdistinctive of the Applicant. But this would not assist the Applicant as the Subject Mark“” is not similar to the Composite Sign.

150 Perhaps recognising this difficulty, the Applicant submits that the Word Mark and theDevice Mark are essential features of the Applicant’s Marks, and are distinctive of the
Applicant’s goods and no other 31 . However, based on the evidence before me and myfindings as follows:(a)

While there appears to have been some use of the Word Mark and/or the Device
Mark per se32, the extent of this type of use is not clear. The volume of sales andpromotional figures I have relate to all of the Applicant’s Marks;

Applicant’s Rebuttal Submissions at [55].
The word “Polo” being used on shoes (see [45(c)]) and the polo player device being used on the chest area ofclothing (see [45(e)]).
31
32- 41 -

(b)The bulk of the evidence shows usage of the Word Mark and/or the Device Mark
together with the highly distinctive words “Ralph Lauren”;(c)

The level of distinctiveness of the Word Mark and/or the Device Mark 33, is not sohigh that one is likely to assume that a mark containing such elements mustnecessarily come from the Applicant or an entity related to it; and(d)Bearing in mind that average consumers tend to regard trade marks as wholes anddo not usually analyse their various details, it is less likely that use of the WordMark and/or the Device Mark as part of an element of the Applicant’s Markswould have made an impression on consumers that was independent of theimpression created by the Applicant’s Marks as a whole;I am unable to come to this conclusion.
151 Even if I am wrong on this, misrepresentation must give rise to a likelihood ofconfusion before it is actionable. In this regard, I have earlier considered the likelihood ofconfusion arising from the use of the Applicant’s Composite Mark and the Subject Mark andfound it unlikely (at [129]). Given that I do not even find similarity between the Subject Markand the Word Mark (at [99]) or the Subject Mark and the Device Mark (at [97]), thelikelihood of confusion arising from the Word Mark or Device Mark is even more remote.
152 Finally, I remind myself that it is not sufficient for passing off purposes to show thatsome members of the public might wonder whether the Subject Mark is connected with theApplicant. A substantial number must be likely to assume that there is such a connection
before there can be passing off. I am not persuaded that there is any such likelihood in thiscase.
153 As misrepresentation has not been established, and misrepresentation is an essential
component of the tort of passing off, it follows that the Applicant’s claim for passing off must
fail.
Conclusion on ground of invalidation under the Passing Off Ground
154 The ground of invalidation under the Passing Off Ground fails.
Conclusion
155 Having considered all the pleadings and evidence filed and the submissions made inwriting and orally, I find that the present application for a declaration of invalidity fails on all
grounds. The Proprietor is entitled to costs to be taxed, if not agreed.

Date of Issue: 14 December 2017

Extremely low in respect of the Word Mark for “polo shirts” and “t-shirts” but normal for all other goods inClasses 9, 18 and 25, and normal in respect of the Device Mark (see [30]).
33- 42 -