The U.S. Court of Appeals for the Second Circuit concluded that a double horse logo used on fragrances was too similar to the U.S. Polo Ralph Lauren (PRL) horse and rider mark used on the same goods. United States Polo Association, Inc. v. PRL USA Holdings, Inc., Case No. 12-1346 (2nd. Cir., Feb. 11, 2013) (Raggi, J.; Hall, J.; Droney, J.)

PRL and the United States Polo Association (USPA) have a long history of disputes over Ralph Lauren’s polo player trademark. The USPA was first found to infringe PRL’s mark in 1984. Later, in 2006, the USPA’s use of a solid double horseman mark in apparel unaccompanied by text was found to infringe PRL’s mark, but no infringement was found where the USPA used that same mark accompanied by the letters U.S.P.A or an outlined version of the mark either alone or accompanied by the letters U.S.P.A.

The latest dispute arose when the USPA moved its use of the double horseman mark, previously only on apparel, to use in connection with fragrances. The USPA filed for a declaratory judgment that its use of such a mark was non-infringing. Based on PRL’s counterclaim, the district court sided with PRL and issued an injunction barring the USPA’s use of either the double horseman logo or the word “polo” in connection with fragrances. USPA appealed.

The Second Circuit affirmed the injunction, rejecting all of the USPA’s arguments. First, the Court rejected the USPA’s contention that the 1984 and 2006 rulings precluded the district court’s finding of infringement, disagreeing with the USPA’s interpretation of those decisions. The Second Circuit also rejected the USPA’s prior use defense. Key to the Court’s rejection of both the prior litigation defense and the prior use defense was the difference between use in the apparel market and use in the fragrances market. In its similarity analysis, the Court focused on the particular industry where the marks compete and concluded that use authorized in one industry does not preclude a finding of infringement in another. The court similarly rejected USPA’s argument that the apparel and fragrance markets were so similar as to justify use in fragrances where use in apparel was permitted.

Finally, the Second Circuit affirmed the district court’s permanent injunction, finding that it was properly based on an actual finding of irreparable harm and that enjoining the use of the double horseman logo or the word “polo” alone was not improperly broad and was justified by the USPA’s long history of infringement of PRL’s mark.