Delhi High Court: Appellant, the Polo/Lauren Company L.P., filed an appeal against the order dated 14-07-2023 passed by the District Judge (Commercial Court-01) Central, Tis Hazari Courts, Delhi (‘Tis Hazari Court’) vacating the ad-interim injunction restraining defendant, Home Needs, from exporting, manufacturing, marketing, using, selling/soliciting, advertising, etc. and the trade mark/label ‘POLOLIFETIME’, word ‘POLO’ and the mark ‘RALPH LAUREN’ carrying with it a picture of a polo player. The Division Judge Bench of Yashwant Varma and Ravinder Dudeja, JJ., found merit in the appeal challenging the order passed by the Tis Hazari Court and thus held that till the next date of hearing, there shall be a stay on the impugned order dated 14-07-2023.
Background
Appellant manufactured, distributed, traded, and sold a wide range of clothing, fashion, and lifestyle products, including fashion wear, sportswear, eyewear, luggage, bags, and luxurious home décor, as well as other allied and related goods and services. Appellant started its business in 1967 and had since then been using the mark ‘POLO’ in conjunction with other words/marks in various styles and artistic formats with and without the device of Polo Player, which had been created and were being created over time, namely POLO, POLO RALPH LAUREN.
Appellant claimed that respondent was in the business of manufacturing, marketing, soliciting, selling, displaying and trading a variety of household products and kitchen utensils, including but not limited to stainless steel vacuum insulated bottles, single wall bottles, trays, cookware, dinnerware and other allied/related products, under the trade marks ‘POLOLIFETIME’, POLO, Device of Polo Player for its products which were identical and deceptively similar to the marks of appellant. Appellant contended that adding the word ‘LIFETIME’ to the phrase ‘POLO’ did not make it distinctive and identifiable and thus respondent’s trade mark/label was identical and deceptively like appellant’s trade mark/label in every way, including phonetically, graphically, and architecturally, in its basic idea and critical elements.
The Tis Hazari Court vide an order dated 14-07-2023 while deciding appellant’s application under Order 39 Rules 1 and 2, vacated the ad-interim injunction restraining respondent from using, selling, displaying, advertising and soliciting its products under the marks Polo Lifetime/Polo/POLOLIFETIME and any other marks which might be identical and deceptively similar to the said marks of appellant i.e., the POLO/LAUREN CO. L.P.
Analysis, Law, and Decision
The Court opined that the impugned order dated 14-07-2023 passed by the Tis Hazari Court, in terms of which an ex-parte injunction which was granted on 26-11-2020 had come to be discharged, was prima facie not sustainable.
The Court noted that respondent held a registration for the trade mark ‘POLOLIFETIME’, a composite word, which was registered on 25-02-2011 and on the other hand, appellant held registrations for the word ‘POLO’ as well as the mark ‘RALPH LAUREN’ carrying with it a picture of a polo player as part of the device registration commencing from 04-01-1980 to 27-07-1992.
The Court also noted that in the Polo/Lauren Company L.P. v. Rohit S. Bajaj, CS(OS) 1763 of 2005, a Single Judge of this Court held that the trade marks POLO/RALPH LAUREN/POLO PLAYER DEVICE were liable to be recognized as ‘well-known’ marks as defined under Section 2(1)(zg) of the Trade Marks Act, 1999.
The Court found merit in the appeal challenging the order passed by the Tis Hazari Court and thus, held that till the next date of hearing, there shall be a stay on the impugned order dated 14-07-2023.
The matter would next be listed on 01-02-2024.
[Polo/Lauren Company L.P. v. Home Needs, 2023 SCC OnLine Del 7199, Order dated 07-11-2023]
Advocates who appeared in this case :
For the Appellant: Sanjeev Sindhwani, Senior Advocate; S.K. Bansal, Rishi Bansal, Ajay Amitabh Suman, Neeraj Bhardwaj, Advocates
For the Respondent: R.K. Jain, Devanshu Jain, Advocates
Buy Trade Marks Act, 1999 HERE
