The Polo Lauren Company L.P. scored a win in trademark opposition for its famous polo player icon

In its determination rendered on February 29, 2024, Taiwan’s IP Office (“TIPO”) sided with fashion brand Polo Lauren Company (“PLC”), finding its iconic polo player trademarks (see below) may be confused due to registration of No. 02268824 trademark (the ‘824 trademark).

The ‘824 trademark (see below), was filed on March 22, 2022, and granted on December 16, 2022, designated for use in goods under class 25, including clothing, underwear, swimwear, socks, gloves, necktie, headscarves, hats, pantyhose, etc. PLC filed opposition on March 16, 2023, contending the registration of ‘824 trademark violates, among the others, Article 30.1.10 of Trademark Act.

TIPO found in PLC’s favor on February 29, 2024, reasoning that:

1.    Although the registrant of the’824 trademark argues that his trademark is actually featuring a horse rider holding a sword, TIPO opines such intention is not detectable when consumers view the ‘824 trademark. In fact, it is likely that consumers will only form the visual impressions that both PLC’s trademarks and the ‘824 trademark feature horse riders holding long objects. As such, TIPO considers ‘824 trademark visually and conceptually similar with PLC’s trademarks.

2.    Since ‘824 trademark is applied for use on products like apparel, clothing, and the related accessories, such products are similar with those designated by PLC’s trademarks. They serve similar function and meet similar need for consumers.

3.    Further, TIPO notes PLC’s trademarks have been used for a long time, and are recognized as well-known trademarks in a number of prior cases. Plus, there are more than 50 stores established in Taiwan marketing and selling PLC’s products. Therefore, TIPO posits that PLC’s trademarks are distinctive and consumers should be more familiar with PLC’s trademarks.

4.    In view of the above, considering the similarity between PLC’s trademarks and the ‘824 trademark, the similarity of products designated by ‘824 trademark and those designated by PLC’s trademarks, the distinctiveness of the PLC’s trademark, and consumer’s familiarity with PLC’s trademarks, TIPO agrees with PLC that registration of ‘824 trademark may cause confusion with PLC’s famous polo players trademarks. Therefore, ‘824 trademark is canceled by TIPO accordingly.

Source:

https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4VEx5eTNxM0tQY2ZCVnFRcEU2Wjh4UT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true