United States Polo Assn. v. Polo Ralph Lauren Corp.
T-1881-93 / T-193-95 / T-189-96
Nadon J.
8/3/99
25 pp.
Three appeals from decisions of Trade-mark Opposition Board (Board) which allowed respondent's oppositions and denied appellant's applications to register proposed trade marks on ground appellant had failed to demonstrate trade marks applied for not confusing with respondent's registered trade mark "Polo Player Design" and "Polo"-Appellant proposed use in Canada in association with men's, women's and children's clothes-Parties herein have adduced evidence not before Board when it entered decisions now under appeal-Court must come to own conclusion with regard to correctness of Board's findings: McDonald's Corp. v. Silverwood Industries Ltd. (1989), 24 C.P.R. (3d) 207 (F.C.T.D.)-In doing so, Court must bear in mind special experience and knowledge of Board and consider new evidence put before Court-Onus on appellant to demonstrate Board's decisions not correct-Two appeals (T-189-96 and T-193-95) allowed; one (T-1881-93) dismissed-Appellant non-profit corporation incorporated for purpose of promoting and regulating sport of polo and of coordinating activities of its members, polo players and member clubs-Activities include rule making, safety for players and ponies, educating public and sponsoring national and international polo games and tournaments-No instances of confusion with respondent's trade marks reported-Respondent's business designing, manufacturing and marketing of exclusive high quality articles or clothing and accessories designed by or under direction of Ralph Lauren-Respondent owns family of trade marks including word "polo" or representation of mounted polo player-Between 1980 and 1987, sales of Polo clothing in United States exceeded one billion dollars (U.S.), advertising expenses, 50 million dollars (U.S.)-Between 1986 and 1990, sales in Canada exceeded 170 million dollars (Can.), advertising expenses, over 3.5 million dollars-Test of first impression and imperfect recollection relevant test to be applied in determining whether appellant's marks likely to cause confusion with respondent's marks-Examination of surrounding circumstances enumerated in Act., s. 6(5)(a) to (e)-(a) Inherent distinctiveness-In T-189-96 and T-1881-93, Board made no error in finding respondent's marks inherently distinctive or have acquired distinctiveness through extensive use by respondent-Board also correct in finding appellant's marks have not acquired any reputation in Canada-In T-193-95, Board made no error in finding although respondent's "Polo" mark inherently weak, had become well-known in Canada through extensive use, and appellant's marks have not acquired any reputation in Canada-(b) Board correctly found length of time marks had been in use favoured respondent-(c) Although parties do not compete, Board did not err in finding wares of appellant and those of respondent overlapped and, presumably, their trades could overlap-(d) In T-1881-93, Board correctly found marks bear high degree of visual resemblance and idea suggested by appellant's applied for marks very similar-However, in T-189-96, the appellant's applied for marks and those of respondent not similar other than common element of word "Polo" and ideas suggested by them not similar-In T-193-95, appellant's marks "U.S. Polo Association" and "U.S. Polo Assn." not similar, visually or with respect to ideas suggested by them, to those of respondent-"Polo" ordinary English and French word which respondent cannot appropriate for its own use to detriment of other traders-Average consumer would distinguish without difficulty appellant's marks from those of respondent.