A bump for POLO

24 June 2022

Ralph Lauren Corporation (“Polo”) is a global leader in the design, marketing, and distribution of premium lifestyle products, including apparel, accessories, home, fragrances, and hospitality. Polo is the registered proprietor of the mark ‘POLO SPORT’ since 1967, which is registered in India and also declared a ‘Well-known’ trademark in 2011. Polo also owns the device mark which consists of a horse with a person riding it while flinging his club to hit a ball in the sport of polo.
Polo came across an application for copyright registration under ‘artistic work’ filed by Mr. Sandeep Arora, (Arora) who is engaged in the perfumery business. Polo noted that the mark registered by Arora bore several similarities with its mark since Arora had misappropriated the words ‘Polo’ and ‘Sport’ in their entirety. The only distinguishing feature in Arora’s mark was that four horses with riders playing the polo game were added compared to Polo’s mark which has one horse with a rider playing polo.
Polo thus approached the Hon’ble Delhi High Court and filed a rectification petition seeking removal of the registration made by the Ld. Register of Copyright in respect of impugned artwork under the name of ‘SPORTS POLO’.
Polo contended that Arora had infringed Polo’s literary and artistic copyright by tweaking the material form of Polo’s registered mark with which people recognize the famous Polo brand. Polo further contended that the four horses with riders, being the only distinguishing factor in Arora’s mark could not qualify as an original artistic work. Against this, Arora countered stating that his mark ‘ARRAS SPORTS POLO’ was substantially different as well as distinct from that of Polo for the following reasons:
i. There were four horses with four riders on their respective horses;
ii. The riders were not playing the sport of polo. He further stated that the mark was used for their perfumery business since 2020 which was in no way associated with that of Polo’s businesses.
The primary issues for consideration before the Court were –
1. Whether registration granted in favor of Arora should be canceled?
2. Whether Arora’s copyright was an “original” artistic work?
*We do not claim any copyright in the above image. The same has been reproduced for academic and representational purposes only.
The Court observed that, while comparing two marks, qualitative differences ought to be given preference over quantitative differences. In the present matter, Arora’s mark had a striking resemblance to Polo’s mark. Since, Arora’s copyright was not an original artistic work under the provisions of the Copyrights Act, 1957 and hence Polo was entitled to maintain the petition.
The Court further held that, under Section 45(2) of the Copyrights Act 1957, the Registrar of Copyrights has to hold an inquiry ensuring that, no trademark should be identical and/or deceptively similar to any artistic work which has been registered under the Trademarks Act. In the present case, the Court pointed out a loophole in the registration of Arora’s mark wherein the Copyright Registry had failed to act in terms of Section 45 of the Act as a search would have indicated the similarity between the Polo’s registered marks, in respect of which the copyright also existed.
In support of the foregoing, the Court referred to the case of Marico Ltd. vs. Mrs. Jagjit Kaur, 2018 SCC Del 8488 which dealt with the issue of rectification of copyright. It was observed in the case that, any entry made of a work that was not original would be an entry wrongly made in the Register. Further, a copyright registration could only be granted to original artistic works, and copyright registration could not be granted to outcomes that were reproductions or imitations of other original works.
Thus, the Court allowed the petition and directed the Registry of Copyrights to cancel Arora’s copyright registration of ‘SPORTS POLO’ within eight weeks from the date of the Order.


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