The High Court of Singapore has clarified the factors to be taken into account in the determination of likelihood of confusion, while adopting a rather novel approach to the consumer perception factor in a decision involving a trademark application for eyewear. Polo/Lauren Co LP v. United States Polo Association [2016] SGHC 32, Mar. 8, 2016.

The Polo/Lauren Company LP (PLC) opposed Singapore Trademark Application No. T1215440A for USPA (the Application Mark) in Class 9 for a variety of eyewear, filed by the United States Polo Association (see image below left. View here) PLC relied on two grounds: (1) that similarity between the Application Mark and PLC’s mark (Singapore Trademark Registration No. T9604857H (see image below right. View here) created a likelihood of confusion; and (2) bad faith.

The IP Adjudicator of the Intellectual Property Office of Singapore rejected the opposition on both grounds.

PLC then filed an appeal to the Singapore High Court, albeit only in relation to the ground of similarity between the marks and the resultant likelihood of confusion. The High Court dismissed the appeal with costs to USPA for the following reasons:

Visual similarity: The High Court held that there are no dominant elements in the Application Mark, and agreed with the IP Adjudicator that there is only a low degree of visual similarity between the Application Mark and PLC’s mark.

Aural similarity: Although there is no dominant element in the Application Mark, the High Court did not see any reason why a reasonable consumer would choose to pronounce the Application Mark as “polo-players" rather than as “USPA,” which, although an acronym, is pronounceable. The High Court concluded that there is no aural similarity between the marks.

Conceptual similarity: The IP Adjudicator had held that the marks are conceptually identical. This issue was not appealed to the High Court.

The High Court agreed with the IP Adjudicator’s conclusion that while there may be conceptual identity between the marks, there is no aural similarity and that there is only a low degree of visual similarity. The High Court accordingly held that the marks are similar on the whole, but only to a low degree.

The High Court also observed that eyewear is not purchased on a regular basis. Eyewear is highly personal and is not something that would be purchased in a hurry, but rather, would require the consumer to pay a high level of attention. The High Court stated that the care exercised would not be restricted only to the lenses and the nose pad. Instead, the purchase of eyewear is likely to be influenced by a plethora of factors, including but not limited to, the level of comfort and its appearance. Therefore, any purchase would probably entail a detailed visual inspection of the eyewear. Taking into account all these factors, the High Court concluded that there was no likelihood of confusion on the part of the public.

 

This article was first published in INTA Bulletin on August 15, 2016. For further information, please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx.