On June 28, 2024, Taiwan’s IP Office (“TIPO”) awarded the POLO/LAUREN COMPANY L.P. (“POLO”) a partial win in POLO’s trademark opposition against registered trademark “HUANG-RL”. In its determination, TIPO found for POLO by affirming that POLO’s trademarks “POLO JEANS CO RL RALPH LAUREN Flag Design” and “DOUBLE RL” (no. 00977603 and no. 02087671, hereafter “RL” trademarks, see below) may be confused in the category of clothing products due to the similarity of the contested trademark.
However, TIPO denied POLO’s opposition based on its” POLO BY RALPH LAUREN”, “RALPH LAUREN”, and “RALPH LAUREN (Stylized)” trademarks (no. 00068357, no. 00069729, and no. 01420134, hereafter “RALPH LAUREN” trademarks, all see below), finding there should be no confusion caused.
TIPO
partially agreed with POLO, finding that:
1.
In
terms of similarity, POLO’s “RL” trademarks and the contested trademark all contain
“RL”. Additionally, TIPO noted that in the contested trademark, the letters “R”
and “L” should be the elements that form the strongest impression among the
consumers, because “Huang” is just ordinary last name that is commonly used in
Taiwan. Consumers’ attention would be attracted to “RL” upon seeing the
contested trademark. As such, TIPO considered there should be medium degree of similarity
between POLO’s “RL” trademarks and the contested trademark. However, TIPO found
the similarity between POLO’s “RALPH LAUREN” trademarks and the contested
trademark is quite low. The number of the letters, the way and the pattern the
letters are arranged, and the pronunciation are all different.
2.
As
to similarity between the designated products and services, TIPO found that for
products under class 25, the contested trademark indeed may raise confusion
among the relevant consumers, because POLO’s aforesaid “RL” trademarks are also
applied for use on various kinds of apparel and accessories. However, POLO’s “RL”
trademarks are not used for similar services. Although TIPO agreed that POLO’s “RALPH
LAUREN” trademarks are used for similar advertising and transactional services,
these trademarks are not similar with the contested trademark.
3.
In
view of the above, given that the contested trademark is similar with POLO’s “RL”
trademarks, and that both are distinctive and applied for use in similar
clothing products, TIPO concluded that registration of the contested trademark
for use in similar products may cause confusion with POLO’s “RL” trademarks.
Nonetheless, for services under class 35, since the similarity between POLO’s “RALPH
LAUREN” trademarks and the contested trademark is low, TIPO opined there should
be no likelihood of confusion.
4.
While
POLO further argued that its cited trademarks are famous and the contested
trademark is filed based on intent to imitate POLO’s famous trademarks, TIPO
found POLO’s statements lack supporting evidence. The evidentiary materials
submitted by POLO for proving the status of well-known were all related to POLO’s
other “POLO Player” trademarks, which are less relevant to the fame of POLO’s aforesaid
cited trademarks. Besides, POLO also failed to raise any evidence showing the
filing of the contested trademark was based on bad faith. Hence, TIPO could not
find for POLO.
In conclusion,
the contested trademark’s registration for products under class 25 is canceled
due to similarity with POLO’s “RL” trademarks. As to services under class 35,
TIPO found no likelihood of confusion, and denied POLO’s opposition
accordingly.
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