The Polo/Lauren Company, L.P. v LAWA APPAREL SDN BHD (WA-24IP-13-04/2025)

This is an appeal by The Polo/Lauren Company, L.P. ("Plaintiff") against the decision of the Assistant Registrar of Trademarks dated 15 January 2025 ("Registrar's Decision") dismissing Plaintiff's opposition to the registration of Trademark Application No. 2014010631 for the mark "POLOPALOOZA" in Class 18, in the name of Lawa Apparel Sdn. Bhd. ("Defendant").

After hearing the submissions of both learned counsel and upon careful consideration of all the evidence, affidavits, and authorities placed before this Court, I allowed the Plaintiff's appeal with costs fixed at RM10,000.00 to be paid by the Defendant to the Plaintiff. I now state the grounds for my decision. S/N L2vqC3xYakW6jC0ca6tmjA **Note : Serial number will be used to verify the originality of this document via eFILING portal 3! ! B. BACKGROUND FACTS

The Plaintiff is the proprietor of, inter alia, a family of marks comprising the word "POLO," used either on its own or in conjunction with other words and/or a polo player on a horse in motion (the "Polo Player Device"), in respect of a wide range of goods throughout the world. No TRADEMARK REGISTRATION NO. MARK CLASS REGISTRATION DATE

92/05053 POLO 14 22 July 1992 2. 92/005052 14 16 October 1991

95009302 16 7 September 1995

95/09315 18 7 September 1995

90/06994 ‘BO LUO’ in Chinese characters (POLO) 18 26 October 1990

95/09316 21 04 September 1995 S/N L2vqC3xYakW6jC0ca6tmjA 4! !

95/09317 24 7 September 1995

95/09319 POLO 25 7 September 1995 9. M/097832 25 7 December 1982 10 95/09318 25 7 September 1995 11 95/09318 27 7 September 1995 12 92/04874 28 14 July 1992 ! [4] The Plaintiff’s trademark in Malaysia incorporating the word "POLO" and/or a Polo player device in Class 18, which is of relevance to the present proceedings is as follows: Trademark Registration No. Mark Date of Registration Class & Specification 95009315 7 September 1995 18 S/N L2vqC3xYakW6jC0ca6tmjA 5! ! Goods: Articles made from leather and imitation leather; Trunks, suitcases, travelling bags, valises, briefcases, attache cases, handbags, purses (not of precious metals or coated therewith), pocket wallets; Key cases and billfolds, all in the nature of wallets; Umbrellas and parasols; Parts and fittings for all the aforesaid goods; All included in class 18. [5] The Defendant is a company incorporated under the laws of Malaysia with its principal place of business at PT 1058, Jalan Besar, 45500 Tanjong Karang, Selangor with its nature of business dealing with textiles. The Defendant had filed a trademark application (Application No.: 2014010631) for the Defendant’s Trademark in Class 18 in respect of leather and imitations of leather, and goods made of these materials and not included in other classes; animals skins, hides, trunks and travelling bags; umbrellas; bags for campers; bags for climbers; beach bags; handbags; haversacks; imitation leather; leather leashes; leather shoulder belts; leather straps; leather wallets; pocket wallets; purses; school bags; school satchels; shopping bags; sling bags; suitcases (Defendant’s Application Mark). The representation of the Defendant’s Application Mark is exhibited below:- [6] On 8 April 2016, the Plaintiff filed an opposition proceeding against the Defendant's Application Mark under Section 14(1)(a) and Section 19(1)(a) and (b) of the Trademarks Act 1976. S/N L2vqC3xYakW6jC0ca6tmjA 6! ! [7] On 15 January 2025, the Registrar of Trademarks dismissed the Plaintiff's opposition and allowed the Defendant's application to proceed to registration. [8] Being dissatisfied with the Registrar's decision, the Plaintiff filed the present appeal on 14 April 2025. C. THE REGISTRAR'S DECISION [9] In arriving at her decision, the learned Registrar of Trademarks made the following material findings:

The Defendant's Application Mark is not deceptively or confusingly similar to the Plaintiff's marks. The Defendant's Application Mark consists of the word "POLOPALOOZA" and a design featuring three men on horseback holding mallets. In contrast, the Plaintiff's first mark is the word mark "POLO BY RALPH LAUREN," while the second mark is a polo player design, which is the Plaintiff's core trademark.

The Defendant’s Application Mark will be pronounced as ‘POLOPALOOZA’, while the Plaintiff’s mark may be referred to as ‘POLO BY RALPH LAUREN.’ The Defendant’s mark, ‘POLOPALOOZA’, incorporates additional verbal elements ‘PALOOZA’ which is absent in the Plaintiff’s mark. The Defendant’s Application Mark is sufficiently distinguishable from the Plaintiff’s marks. S/N L2vqC3xYakW6jC0ca6tmjA 7! !

Regarding the goods at issue, the Plaintiff's specification encompasses a broad array of items, including handbags, trunks, school bags, and leather straps. The Defendant's goods, in contrast, include handbags, wallets, briefcases, and other leather articles. Given this demonstrable overlap, the goods are reasonably deemed similar in nature and function, as both are clearly targeted toward consumers seeking leather and imitation leather products for everyday use or travel.

The distinct branding of the Defendant’s Application Mark ‘POLOPALOOZA’, with its unique verbal element ‘PALOOZA’ and visually distinctive polo player device, further sets it apart from the Plaintiff’s marks, such as ‘POLO BY RALPH LAUREN’ and the Polo player device. Given the distinctiveness in both the verbal and visual elements, and the discerning nature of consumers purchasing these good, the likelihood of confusion between the Defendant’s and the Plaintiff’s marks is limited.

The use of the marks in their normal and fair manner in connection with the respective goods would not cause confusion or deception in the trade or to the public. There is no tangible risk that the purchasing public would be confused into believing the goods originate from the same source, or into wondering whether such a connection exists.

The Defendant's Application Mark is neither identical to the Plaintiff's marks, nor does it so closely resemble them as to suggest a likelihood of a connection in trade between the Defendant and the Plaintiff. S/N L2vqC3xYakW6jC0ca6tmjA 8! ! D. PRELIMINARY OBJECTIONS RAISED BY THE DEFENDANT [10] Before dealing with the substantive merits of the appeal, I shall address the preliminary objections raised by the Defendant. i. Alleged Filing of Appeal Out of Time [11] The Defendant contended that the Plaintiff's appeal was filed out of time. Learned counsel for the Defendant relied on Order 87 Rule 3 of the ROC 2012 which provides: "An appeal to the Court under the Act shall be brought by originating summons within one calendar month from the date of decision appealed against." [12] The learned counsel submitted that the Registrar's Decision was dated 15 January 2025 and that the Plaintiff ought to have filed the appeal by 15 February 2025. The Originating Summons was filed on 14 April 2025, some two months after the alleged mandatory deadline. Learned counsel argued that the purported extensions of time obtained by the Plaintiff under Sub-regulation 84(2) of the Trademarks Regulations 1997 (TMA 1997) were extensions in the opposition proceedings and not extensions of time to file an appeal to the High Court. [13] The Plaintiff addressed this issue by submitting that the applicable regulation is the Trade Marks Regulations 2019 ("TMR 2019"), which has repealed the TMR 1997. Under Regulation 33(4) of the TMR 2019, the Registrar of Trademarks is empowered to grant an extension of time not exceeding two months upon the expiry of the S/N L2vqC3xYakW6jC0ca6tmjA 9! ! initial one-month period. In short, learned counsel for the Plaintiff submitted that the present appeal has been properly brought before this Court. [14] I have considered the submissions of both parties on this issue. Having examined the evidence before me, including the extensions of time granted by the Registrar as exhibited in the Plaintiff's affidavit (Exhibits IAJ-14 and IAJ-15), I am satisfied that the Plaintiff took steps to obtain proper extensions of time within the framework provided by the applicable regulations. The TMR 2019, being the operative regulations, confer upon the Registrar the power to extend time under Regulation 33(4). It is in evidence that the Plaintiff obtained two extensions of time from the Registrar, which cumulatively brought the deadline to file the appeal within the period during which the Originating Summons was filed. [15] I am also mindful that the purpose of the time limit is to ensure expeditious prosecution of appeals and not to serve as a technical impediment to shut out meritorious appeals. The Defendant has not demonstrated any prejudice arising from the timeline of filing. In the circumstances, I find that the Plaintiff's appeal was filed within the permissible time. Therefore, the objection raised by the Defendant is without any merits. S/N L2vqC3xYakW6jC0ca6tmjA 10! ! ii. Alleged Defects in the Originating Summons and Plaintiff's Affidavits [16] The Defendant raised a number of other procedural objections concerning alleged defects in the Plaintiff's Originating Summons and the supporting affidavits. These included:

The alleged failure to state the applicable Trademarks Act;

The alleged failure to obtain leave of Court to mount this appeal;

The alleged failure to state the Plaintiff's registration numbers;

The alleged failure to have an address for service within the jurisdiction; and

The alleged lack of authority of the deponent of the Plaintiff's main affidavit. [17] With regard to the failure to state the applicable Act, the Originating Summons clearly invoked both Section 28(5) & (6) of the TMA 1976 and Section 35(10) and Section 163 of the TMA 2019. This is entirely appropriate given the transitional provisions under the TMA 2019. No prejudice or confusion arises from this dual citation. The appeal relates to a decision rendered by the Registrar under the TMA 1976, and by virtue of Section 165 of the TMA 2019, the transitional provisions preserve the applicability of the TMA 1976 to proceedings commenced thereunder. I find this objection is without substance. [18] Regarding the issue of leave to appeal, I note that Section 28(5) of the TMA 1976 provides for a right of appeal to the Court from a decision of the Registrar. The Defendant alleges that the Plaintiff failed to obtain leave of Court to file the appeal beyond the stipulated S/N L2vqC3xYakW6jC0ca6tmjA 11! ! 30-day period. However, the Registrar of Trademarks is empowered to grant extensions of time to appeal to the Court, as authorized under Rule 84 of the TMR 1997. Learned counsel for the Plaintiff presented evidence demonstrating that the Plaintiff obtained a total extension of two months to appeal the Registrar's decision. Specifically, the Plaintiff sought and was granted two extensions of one month each by the Registrar. The Plaintiff referenced Exhibit MW-3 in its affidavit in reply, comprising Forms 27A dated 13 February 2025 and 10 March 2025, respectively, which evidence the granted extensions of time. The Registrar's authority to grant such extensions is derived from section 77(1) of the TMA 1976 and Regulation 84 of the TMR 1997. Therefore, I find this objection also to be misconceived. [19] As regards to the alleged failure to state the Plaintiff's registration numbers, the Plaintiff's Originating Summons and the supporting affidavit, read together with the exhibits thereto (in particular Exhibit IAJ-2 and IAJ-16), adequately identified the Plaintiff's relevant registrations. While the Plaintiff acknowledged that Exhibit MW-5 may have contained certain omissions, this is a matter of form rather than substance, and the Plaintiff's registrations were otherwise clearly before the Court. I find no merits in the objection. [20] As regards to the alleged failure to have an address for service within jurisdiction, the Plaintiff's solicitors, Messrs Sukumar Karuppiah & Co., maintain an office within the jurisdiction at Suite 3B-19-6, Level 19, Block 3B, Plaza Sentral, Jalan Stesen Sentral 5, 50470 Kuala Lumpur. This satisfies the requirements for an address for service. The objection too is without any merits. S/N L2vqC3xYakW6jC0ca6tmjA 12! ! [21] As regards the authority of Ivan Arnold Jonathan a/l James Aaron to affirm the Plaintiff's main affidavit, the Defendant challenged the basis upon which the deponent acted for the Plaintiff. I have examined the Letter of Authorization exhibited as IAJ-1, the Power of Attorney exhibited in the Plaintiff's Validation Affidavit (Exhibit MW-1), and the affidavit of Wong Ka Wai Maggie which confirmed the authority of the deponent and validated the contents of the Plaintiff's main affidavit. I am satisfied that adequate authority existed for the deponent to act on behalf of the Plaintiff in these proceedings. iii. The Defendant's Objection to the Plaintiff's Validation Affidavit (Enclosure 22) [22] The Defendant raised a preliminary objection that the Plaintiff's Affidavit in Reply affirmed by Wong Ka Wai Maggie on 18 June 2025 (Enclosure 22) was defective because it was affirmed before a Notary Public in Hong Kong, China, which is part of the People's Republic of China which is not a Commonwealth country. The Defendant relied on Order 41 Rule 12 of the ROC 2012 and the Diplomatic and Consular Officers (Oaths and Fees) Act 1959. [23] Order 41 Rule 12 ROC 2012 provides: "A document purporting to have affixed or impressed thereon or subscribed thereto the seal or signature of a Court, Judge, notary public or person having authority to administer oaths in a Commonwealth country and in the case of any other country the seal or signature of a consular officer of a Commonwealth country in testimony of an affidavit being taken before it or him shall be admitted in S/N L2vqC3xYakW6jC0ca6tmjA 13! ! evidence without proof of the seal or signature being the seal or signature of that Court, Judge, notary public or person." [24] The Plaintiff explained that the affidavit was affirmed before a Notary Public in Hong Kong and was subsequently apostilled and legalised by the Consular at the Malaysian Consulate in Hong Kong. The Plaintiff further explained that the deponent was directed by the Malaysian Consular to follow the full legalisation process. [25] I have considered this objection. While I acknowledge that Hong Kong, being part of the People's Republic of China, is technically not a Commonwealth country, the affidavit was in fact legalised by the Malaysian Consulate in Hong Kong. The purpose of the requirements under Order 41 Rule 12 of the ROC 2012 and the related statutory provisions is to ensure the authenticity and reliability of affidavits affirmed outside Malaysia. Where an affidavit has been affirmed before a Notary Public, apostilled, and subsequently legalised by the Malaysian Consular authority, the objective of authentication has been substantially achieved. The legalisation by the Malaysian Consulate in Hong Kong provides the necessary consular authentication contemplated by the Rules. [26] Moreover, I note the Plaintiff's explanation that it was the Malaysian Consulate itself that directed the deponent to follow the process that was followed. It would be unjust to penalise the Plaintiff for following the directions of the very consular authority whose authentication the Rules require. I therefore find that the affidavit is admissible and reject this preliminary objection. S/N L2vqC3xYakW6jC0ca6tmjA 14! ! [27] In summary, I find that none of the preliminary objections raised by the Defendant are meritorious to the extent that they would warrant the dismissal of the Plaintiff's appeal or the striking out of the Plaintiff's evidence. In my considered view, the objections are procedural in nature and do not go to the substance of the dispute. E. THE ROLE OF THE APPELLATE COURT [28] Before turning to the substantive merits, it is important to set out the role of this Court in an appeal from the Registrar of Trademarks. [29] It is well established that an appeal from the Registrar of Trademarks to the High Court is by way of a rehearing. The Court is entitled to form its own independent view on the facts and the law, and is not bound by the Registrar's findings, although it will give due weight to them: (see Yong Sze Fun & Anor v. Syarikat Zamani Hj Tamin Sdn Bhd & Anor [2006] 4 CLJ 1). [30] The Federal Court in Tong Guan Food Products Pte Ltd v. Hoe Huat Hng Foodstuff Sdn Bhd [1991] 2 MLJ 361 held that on appeal from the Registrar of Trademarks, the Court is entitled to come to its own conclusion, whether or not the same as the Registrar's. The Court should give due weight to the Registrar's decision, particularly on matters within the Registrar's expertise, but is not fettered by it. [31] In Application by Pianotist Co Ltd [1906] 23 RPC 774, it was held that the tribunal hearing an appeal from the Registrar of Trademarks S/N L2vqC3xYakW6jC0ca6tmjA 15! ! must form its own independent judgment, taking into account the Registrar's decision and the materials before it. [32] In Merck Kgaa v Leno Marketing (M) Sdn. Bhd. (Registrar of Trade Marks, interested party) [2018] 5 MLJ 1 the Federal Court held that the role of the High Court is to determine the correctness of the registrar’s decision based primarily on the materials and grounds then available before the registrar. [33] The Court of Appeal in Pernas International Holdings Bhd v. Projek Lebuhraya Utara-Selatan Bhd [2013] 4 MLJ 216 reiterated that the High Court, sitting in its appellate capacity against the Registrar's decision, is not bound to merely review the decision for errors of law but may reconsider the matter afresh. [34] Against this backdrop, I am also cognisant of the salient principles governing appellate intervention in appeals from the Registrar of Trademarks’ decision. That said, in an appeal against the Registrar’s Decision, it is trite that due weight shall be given to the Registrar’s Decision. The Court of Appeal in Bata Ltd v Sim Ah Ba @ Sim Teng Khor & Ors [2006] 6 MLJ 445 held as follows: “[43] …We agree that this decision of the Registrar must bear some weight upon the court when considering this application of the appellant. …Since the law has placed upon the Registrar such a discretion and if he has made an evaluation before exercising his discretion then it is our view that due weight should be accorded to his decision…” S/N L2vqC3xYakW6jC0ca6tmjA 16! ! [35] The High Court should be very slow in disturbing the decision of the Learned Registrar of Trademarks unless it is satisfied that the Learned Registrar has “gone clearly wrong”. In Hui Kuan Hoe v Societe Des Produits Nestle SA [2012] 5 MLJ 343 the Court of Appeal stated the following: “[38] The registrar’s decision to allow the opposition had been made after hearing evidence, taking into account the respondent’s mark. His decision entitled to substantial weight: Solavoid Trade Mark [1977] RPC 1 at p 28 per Lord Fraser of Tully Belton PC and applied in Bata Ltd v Sim Ah Ba @ Sim Teng Khor & Ors [2006] 6 MLJ 445, at p 462. [39] Unless the registrar has gone clearly wrong, his decision ought not to be interfered with: Banham v Reddaway [1927] AC 406, at p 413 (HL). In this regard, I am of the view that the registrar had not ‘gone clearly wrong’. Hence, the learned judge had correctly refrained from interfering with the registrar’s decision in allowing the opposition with costs.” [36] With these principles in mind, I turn now to consider the substantive merits of the appeal. F. THE LAW ON TRADE MARK OPPOSITION [37] The Plaintiff's opposition was founded on Section 14(1)(a) and Section 19(1)(a) and (b) of the TMA 1976. [38] Section 14(1)(a) of the TMA 1976 provides: S/N L2vqC3xYakW6jC0ca6tmjA 17! ! "A mark shall not be registered as a trade mark or part of a trade mark— (a) if the use of which would be likely to deceive or cause confusion to the public or would be contrary to law;" [39] Section 19(1) of the TMA 1976 provides: "(1) No trade mark shall be registered in respect of any goods or description of goods that is identical with or so nearly resembling a trade mark belonging to a different proprietor and already on the Register for— (a) the same goods, (b) the same description of goods, as to be likely to deceive or cause confusion." [40] The burden on the opponent in trade mark opposition proceedings is well settled. The opponent must establish that the applicant's mark is identical with or so nearly resembles the opponent's registered mark as to be likely to deceive or cause confusion. The test is applied from the perspective of the average consumer of the goods in question, who is reasonably well-informed, reasonably observant, and circumspect. G. FINDINGS [41] I begin with a brief examination of the Defendant’s Application Mark. [42] The Defendant’s Application Mark is a composite mark comprising both textual and device elements: S/N L2vqC3xYakW6jC0ca6tmjA 18! ! [43] The textual element is the word “POLOPALOOZA”, consisting of five syllables. As highlighted by learned counsel for the Plaintiff, the first two syllables — “POLO”, immediately stand out, not least because they are printed in white against a grey background, whereas “PALOOZA” appears in a lighter grey and is comparatively faint. Visually, however, the dominant feature of the Defendant’s Application Mark is the triple polo-players device, which is rendered with greater clarity and prominence and appears approximately four times larger than the words “POLOPALOOZA”: [44] The Defendant’s Application Mark juxtaposed against the Plaintiff’s Registered Polo Device Mark in Class 18 is set forth below for ease of reference. Defendant’s Application Mark Plaintiff’s Registered Polo Device Mark in Class 18 "POLOPALOOZA" with a device of three polo players on horseback with mallets Plaintiff's Registered Mark (Class 18) A single polo player on horseback with mallet (Registration No. 95009315) S/N L2vqC3xYakW6jC0ca6tmjA 19! ! SECTION 14(1)(a) OF THE TMA 1976- LIKEHOOD OF DECEPTION OR CONFUSION [45] Having examined the Defendant’s Application Mark, the central question in this appeal is whether it so nearly resembles the Plaintiff’s registered marks that its use is likely to deceive or cause confusion within the meaning of section 14(1)(a) of the TMA 1976. [46] The Federal Court in Yong Teng Hing b/s Hong Kong Trading Co. & Anor v Walton International Ltd [2012] 6 MLJ 609 (“Walton”) considered the application of section 14(1)(a) in clear terms. First, the Federal Court explained that the object of section 14(1)(a) is the protection of the public and consumers from confusion or deception arising from the use of similar marks. Accordingly, a mark must be refused registration if its use is likely to deceive or cause confusion, even where the confusion arises from an earlier identical or similar mark (whether registered or not), and even where the goods or services are not identical to those sought to be registered. The Federal Court further endorsed the well-settled test articulated in Bali Trade Mark [1969] RPC 472 which held that the inquiry is one of fact and degree. It is not necessary to prove actual deception or a probability of passing off or infringement. It is sufficient if registration would cause a number of persons to wonder whether the goods or services come from the same source. The salient pronouncement of the Federal Court in Walton’s case is as follows: [25] The objective and purpose of the s 14(1)(a) of the Act is to protect the public and consumers from instances of confusion or deception as a result of the use of two similar marks. Thus, under s 14(1)(a) of the Act, a mark shall be refused registration if use thereof S/N L2vqC3xYakW6jC0ca6tmjA 20! ! is likely to deceive or cause confusion to the public notwithstanding that it is the result of use of an earlier identical or similar mark, whether registered or not in Malaysia and which is being used in relation to goods or services which may be different from that sought to be registered….. [26] As regards the test of confusion and deception it is now well settled. The decision of the House of Lords in the case of Bali Trade Mark [1969] RPC 472 in interpreting s 11 on the UK Trade Marks Act which is equivalent to ours 14(1)(a) of the Act is highly instructive. Lord Upjohn held in that case at p 496 on the test of likelihood of confusion and deception, as follows: What then, is the test? This must necessarily be a question of fact and degree in every case ... It is not necessary in order to find that a mark offends against section 11 to prove that there is an actual probability of deception leading to passing off or (I add) an infringement action ... It is sufficient if the result of the registration of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products came from the same source. [47] In determining likelihood of confusion or deception, the authorities recognise that the Court must identify what are the “essential features” of the Plaintiff’s registered mark. As explained by Sir Wilfred Greene MR in Saville Perfumery Ltd v June Perfect Ltd and FW Woolworth & Co Ltd (1941) 58 RPC 147, traders and consumers do not retain in memory every detail of a mark; instead, they remember it by a feature that strikes the eye and fixes itself in the recollection—sometimes described as the “distinguishing” or “essential” feature. [48] In undertaking the comparative endeavour of the impugned marks, the marks must be assessed as a whole, with attention to visual, S/N L2vqC3xYakW6jC0ca6tmjA 21! ! aural and conceptual similarity. They should be compared side-by-side, but the analysis must also account for imperfect recollection, because the relevant consumer in the marketplace rarely has the luxury of exact, simultaneous comparison. The overall assessment is therefore a global one, taking into account all factors relevant to the circumstances. [49] The Supreme Court in Tohtonku Sdn Bhd v Superace (M) Sdn Bhd [1992] 2 MLJ 63 reaffirmed the approach stated by Parker J in Pianotist Co Ltd [1906] 23 RPC 774. The Court must consider: (i) how the marks look and sound; (ii) the goods or services to which they apply; (iii) the nature of the customers likely to purchase them;

(iv) all surrounding circumstances; and (v) what is likely to happen if each mark is used in a normal manner in the course of trade. The Supreme Court in Tohtonku Sdn Bhd held that: “The ‘test’ which Wan Adnan J was referring to were contained in Parker J’s judgment in the Pianotist Co. Ltd [1906] 23 RPC 774, in the following terms: You must take the two words. You must judge them, both by their look and their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those marks are used in a normal way as a trade mark of the goods of the respective owners of the marks.” [50] More recently, the Federal Court in Ortus Expert White Sdn Bhd v Nor Yanni bt Adom & Anor [2022] 2 MLJ 67 distilled these S/N L2vqC3xYakW6jC0ca6tmjA 22! ! principles into a structured test for likelihood of confusion and/or deception. The Court held that: (a) both side-by-side comparison and the imperfect recollection test are engaged; (b) comparison extends to phonetic, visual, trade channel and idea aspects; (c) the purpose is to determine whether the defendant’s mark contains the essential features of the plaintiff’s registered mark that strike the eye and fix themselves in recollection; (d) the Court must then consider all surrounding circumstances to decide whether an ordinary consumer, with ordinary memory and an appropriate level of literacy, is likely to be deceived into thinking the marks are the same; and (e) the Court is entitled to act on its own assessment and is not confined to witness opinion. [51] In Ortus White, the Federal Court also referred to Tan Tee Jim SC’s Law of Trade Marks and Passing Off in Singapore and the Singapore Court of Appeal’s decision in The Polo/Lauren Co, LP v Shop-in Department Store Pte Ltd [2006] 2 SLR® 690 on the relevance of “extraneous” factors. The point is this: while similarity of marks focuses on the marks themselves, likelihood of confusion is a broader fact-finding exercise that must be assessed globally, taking into account all relevant circumstance, such as the closeness of the goods, the overall impression of the marks, imperfect recollection, and the risk that the public might believe the goods come from the same source or economically linked sources. In appropriate cases, steps taken by a defendant to differentiate its goods may also be pertinent to that global assessment. The following excerpt from the Federal Court case of Ortus White is instructive: S/N L2vqC3xYakW6jC0ca6tmjA 23! ! [102] We find support for the aforesaid reasons from the Singaporean academic reference in Law of Trade Marks and Passing Off in Singapore , by Tan Tee Jim, SC (3rd Ed, Vol I, Sweet & Maxwell) pp 657–658, paras [12.031]–[12.033] and [12.040], where the Court of Appeal of Singapore in The Polo/Lauren Co, LP v Shop-in Department Store Pte Ltd [2006] 2 SLR® 690 adopted the approach of extraneous factors in determining the likelihood of confusion as follows: [12.031] It is axiomatic that the determination of a likelihood of confusion on the part of the public inevitably involves a fact-finding and inference-drawing exercise in which all relevant facts are to be considered. This is unlike an inquiry into the similarity of marks which is solely directed at the features of the marks themselves. The exercise focuses on the effect that the similarities of the marks as well as the goods or services in question are likely to have on the relevant section of the public. It is clear that the likelihood of confusion is not to be presumed simply because the marks and the goods in question are identical or similar. [12.032] The Court of Appeal has repeatedly stressed that the question of the likelihood of confusion is to be ‘assessed globally’, taking into account: all the circumstances including the closeness of the goods, the impression given by the marks, the possibility of imperfect recollection and the risk that the public might believe that the goods come from the same source or economically-linked sources. [12.033] It is noticeable that this approach is reminiscent of the approach encapsulated in the following celebrated passage of Parker J in Pianotist Co Ltd’s Application under the old UK law: S/N L2vqC3xYakW6jC0ca6tmjA 24! ! You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trademarks is used in a normal way as a trademark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion — that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public, which will lead to confusion in the goods — then you may refuse the registration or rather you must refuse the registration in that case. … [12.040] Upon appeal, the Court of Appeal endorsed the learned judge’s approach in taking into account ‘extraneous’ factors as well as his rationale for the approach. It said: The question of likelihood of confusion has to be looked at globally taking into account all the circumstances including the closeness of the goods, the impression given by the marks, the possibility of imperfect recollection and the risk that the public might believe that the goods come from the same source or economically-linked sources. … But that is not all. Steps taken by the defendant to differentiate his goods from those of the registered proprietor are also pertinent. (Emphasis added.) S/N L2vqC3xYakW6jC0ca6tmjA 25! ! [52] The following propositions emerge from the authorities cited above and provide the proper framework for determining whether the Defendant’s Application Mark is likely to deceive or cause confusion within the meaning of section 14(1)(a) of the TMA 1976: a) Likelihood of confusion is a question of fact and degree. It is not necessary to prove actual deception. It suffices if the similarities are such that a substantial number of persons would be caused to wonder whether the respective goods or services originate from the same source or are economically connected. b) In assessing similarity, the Court focuses on the “essential” or “distinguishing” features of the registered mark—those features that strike the eye and fix themselves in the memory. This reflects commercial reality: consumers and traders do not retain fine details but remember marks by their dominant impressions. c) The marks must be compared as a whole, from the perspectives of visual, aural and conceptual similarity. The Court considers the marks side-by-side, but also applies the test of imperfect recollection, recognising that consumers encounter marks in the marketplace with ordinary memory and without the benefit of careful comparison. d) The analysis is not confined to the marks in the abstract. The Court must consider the goods or services, trade channels, the nature of the purchasers, and how the marks are likely to be used “in a normal way” in the course of trade, together with all other surrounding circumstances. S/N L2vqC3xYakW6jC0ca6tmjA 26! ! e) The Federal Court in Ortus White distilled the governing principles into a practical test: (i) both side-by-side comparison and imperfect recollection are engaged; (ii) comparison extends to phonetic, visual, trade channel and idea aspects; (iii) the inquiry asks whether the defendant’s mark captures the essential features of the plaintiff’s mark; and (iv) the ultimate question is objective, i.e., whether an ordinary consumer, with ordinary memory and an appropriate level of literacy, is likely to be deceived into thinking the marks (and hence the source of the goods/services) are the same or connected. The Court is entitled to act on its own assessment and is not confined to witness opinion. f) While similarity of marks is assessed by reference to the marks themselves, likelihood of confusion is assessed globally with reference to all relevant circumstances. In appropriate cases, steps taken by the defendant to differentiate its goods/services (and other market realities) may be taken into account as part of that global evaluation. [53] Guided by the above pronouncements, below are my observations after comparing both the Defendant’s Application Mark and the Plaintiff’s Registered Polo Device Mark in Class 18.

Visual Comparison [54] In addressing this point, learned counsel for the Defendant submitted that the Plaintiff’s Trademark is a simple work mark S/N L2vqC3xYakW6jC0ca6tmjA 27! ! “POLO BY RALPH LAUREN” and a polo player device and on the contrary, the Defendant’s Trademark is a composite trademark which includes the following feature: a) the word “POLOPALOOZA”; and b) a device featuring three men riding on horseback holding mallets; [55] According to learned counsel, the inclusion of all the above elements clearly differentiates the two trademarks from a visual perspective, while simultaneously conveying entirely different meanings and associations to consumers. Learned counsel emphasized that when considering the visual aspects of both trademarks, the two are distinctively dissimilar, and the public could not possibly be deceived or confused by them. [56] With respect, I disagree. In my considered view, the Defendant's Application Mark prominently features a device of polo players on horseback wielding mallets. This device is strikingly reminiscent of the Plaintiff's iconic polo player device. While the Plaintiff's registered mark features a single polo player and the Defendant's mark features three polo players, the essential visual elements remain the same: polo players mounted on horses, in dynamic action, wielding mallets. This is an essential feature of the Plaintiff's Polo Trademark. [57] The average consumer encountering the Defendant's mark would immediately perceive the polo player imagery, which is the dominant S/N L2vqC3xYakW6jC0ca6tmjA 28! ! and distinctive visual element. The word element "POLO PALOOZA" reinforces rather than diminishes this visual association with polo and, by extension, with the Plaintiff's well-known polo player mark. [58] I find the visual similarity between the marks to be significant. The multiplication of the polo player device from one to three does not constitute a sufficient differentiating factor. If anything, the presence of three polo players amplifies the association with the game of polo, which is the very conceptual foundation of the Plaintiff's marks. The ordinary consumer, operating on the basis of imperfect recollection, would likely perceive the Defendant's Application Mark as a mere variant or extension of the Plaintiff's mark. [59] The Registrar, in her decision, distinguished the marks on the basis that the Defendant's mark features three players while the Plaintiff's features one. With respect, this analysis is overly technical and fails to appreciate the overall impression created by the dominant device element. The number of polo players is a minor detail that is unlikely to register significantly in the mind of the average consumer.

(ii) Aural Comparison [60] On the aural comparison, learned counsel for the Defendant submitted that the Plaintiff’s and Defendant’s marks are neither identical nor similar because they are pronounced differently. Counsel argued that while both marks share the prefix “POLO”, it would be erroneous to focus on that element in isolation and disregard the remainder of the Defendant’s Application Mark. S/N L2vqC3xYakW6jC0ca6tmjA 29! ! [61] Learned counsel further contended that the Plaintiff is not entitled to a monopoly over the prefix “POLO” to the exclusion of other traders. In support, the learned counsel cited the case of McCurry Restaurant (KL) Sdn Bhd v McDonald’s Corporation [2009] 3 MLJ 774, where Gopal Sri Ram JCA (as he then was) cautioned against assuming monopoly rights in a common prefix. His Lordship observed: “[15] …Where the learned judge, with respect, erred is to assume that the respondent had a monopoly in the use of the prefix ‘Mc’ on a signage or in the conduct of business.” [62] Further, in Consitex SA v TCL Marketing Sdn Bhd [2008] 3 MLJ 574, Ramly Ali J (as he then was) held that aural similarity must be assessed by reference to the marks taken as a whole. There, His Lordship found that even where the marks shared a syllable, the overall sound remained materially different, and any limited similarity was insufficient to sustain an infringement claim. His Lordship also noted that in some markets, oral confusion may carry less weight where the goods are not typically purchased by telephone or requested orally from sales assistants. The salient pronouncement of the Court is as follows: “[33] Aurally, the marks differ as well. In particular: …

the defendant’s mark Emmer Zecna and the plaintiff ’s mark only have one identical syllable which is the syllable ‘NA’ in the suffix of both marks. Overall, the marks sound very different, with the plaintiff ’s mark being more difficult to S/N L2vqC3xYakW6jC0ca6tmjA 30! ! pronounce. Even if there are any similarities, it is not sufficient to cause an action in trademark infringement. Compare the co-existence of COCA-COLA and PEPSI-COLA for carbonated drinks, NESCAFE and ALICAFE for coffee, POWER and SUPERPOWER for shoes, adax and DAKS for clothing in Malaysia. [35] In any event, even assuming oral confusion between the marks does exist, the consumers of the plaintiff ’s and defendant’s goods do not purchase the goods over the telephone and neither do they ask for the goods orally from the sales assistant. Therefore, oral confusion is not so relevant.” [63] In light of the aforementioned cases, learned counsel for the Defendant submitted that the Plaintiff’s act in drawing the similarities in respect of the prefix “POLO” is an ill attempt to seek a backdoor approach to monopolise such prefix. [64] With respect, I disagree with learned counsel’s contention. Aurally, the Defendant's Application Mark contains the word "POLO PALOOZA." The first and most prominent word element is "POLO," which is identical to the word mark extensively used and registered by the Plaintiff. [65] It is a well-established principle in trade mark law that the first word or syllable of a mark tends to make the greatest impression on the consumer: see London Lubricants (1920) Ltd's Application

42 RPC 264. The word "POLO" is the leading element of the Defendant's textual component. The addition of "PALOOZA" (a colloquial derivative) does not sufficiently distinguish the mark aurally. A consumer referring to the Defendant's products is likely to S/N L2vqC3xYakW6jC0ca6tmjA 31! ! abbreviate the reference to simply "POLO" goods, thereby creating a direct aural overlap with the Plaintiff's marks. [66] The Registrar compared the Defendant's mark as being pronounced "POLOPALOOZA" against "POLO BY RALPH LAUREN." With respect, this comparison is flawed. The relevant comparison should be between the Defendant's Application Mark and the Plaintiff's polo player device mark in Class 18 and the word "POLO" as used by the Plaintiff. The Registrar erred in confining the aural comparison to "POLO BY RALPH LAUREN" when the Plaintiff's registrations include the word "POLO" standing alone and the polo player device mark. [67] On that score, I find that aurally, there is a significant degree of similarity, with the dominant aural element "POLO" being common to both the Plaintiff's marks and the Defendant's Application Mark.

(iii) Conceptual Comparison [68] In my considered view, conceptually, both marks convey the same idea: the sport of polo. The Plaintiff's mark depicts a polo player in action. The Defendant's Application Mark depicts polo players in action. Both marks evoke the game of polo, the elegance, the equestrian tradition, and the luxury associated with the sport. [69] The word "PALOOZA" in the Defendant's mark does not introduce a meaningfully different concept. The central concept remains "POLO." The composite impression of the Defendant's Application S/N L2vqC3xYakW6jC0ca6tmjA 32! ! Mark is inextricably linked to the concept of polo — the very concept that is at the heart of the Plaintiff's brand identity. [70] I find that the conceptual similarity between the marks is high. Both marks communicate the same thematic essence that is the sport of polo and its associated imagery.

(iv) Likelihood of confusion [71] Having found that the marks are visually, aurally, and conceptually similar to a significant degree, I must now consider whether there is a likelihood of confusion or deception. ! [72] The paramount importance is that the public and consumers must be protected from instances of confusion or deception as a result of the use of two similar marks, in this case the parties’ marks. In this regard, it is an irrefutable fact that the Plaintiff is the registered proprietor in Malaysia of a family of marks in which the distinctive element is, the word, “POLO”, simpliciter, and the Polo Player Device Mark. [73] The goods for which the Defendant's Application Mark is sought to be registered fall within Class 18. The Plaintiff's polo player device mark (Registration No. 95009315) is likewise registered in Class 18. A comparison of the respective goods specifications reveals a substantial overlap: S/N L2vqC3xYakW6jC0ca6tmjA 33! ! Plaintiff’s Trademark In Class 18 Defendant’s Application Mark ! ! !!!!! ! ! ! ! !!!!!!! Protected Goods Protected Goods Articles made from leather and imitation leather; trunks, suitcases, travelling bags, valises, briefcases, attache cases, handbags, purses (not of precious metals or coated therewith), pocket wallets; key cases and billfolds, all in the nature of wallets; umbrellas and parasols; parts and fittings for all the aforesaid goods; all included in Class 18 Articles made from leather and imitations of leather, and goods made of these materials and not included in other classes; animals skins, hides, trunks and travelling bags; umbrellas; bags for campers; bags for climbers; beach bags; handbags; haversacks; imitation leather; leather leashes; leather shoulder belts; leather straps; leather wallets; pocket wallets; purses; school bags; school satchels; shopping bags; sling bags; suitcases; all included in Class 18.! [74] It is manifest that the goods are identical or of the same description. Both specifications cover leather goods, bags, wallets, purses, trunks, suitcases, travelling bags, and umbrellas. The Defendant's specification is in fact broader, encompassing additional types of bags, but the core goods are the same. [75] The Defendant attempted to argue before the Registrar that the parties' goods are targeted at "entirely different segments of consumer." With respect, this argument is misconceived. The Class 18 specifications of both marks cover the same types of goods — leather goods, bags, wallets, purses, and travel accessories. These are common consumer goods purchased by the general public through similar channels of trade, including retail stores, department S/N L2vqC3xYakW6jC0ca6tmjA 34! ! stores, and online platforms. There is no basis for segmenting the consumers of these goods into different categories. [76] The evidence before this Court establishes that the Plaintiff's "POLO" marks, including the polo player device, have been extensively used and are widely known in Malaysia and globally. The Plaintiff presented evidence demonstrating that its polo player device is one of the most recognizable marks in the fashion and luxury goods industry globally. The Plaintiff contends that in Malaysia, its marks have been registered since 1995 (in Class 18) and across numerous other classes. I take judicial notice of the numerous successful opposition and enforcement actions involving the Plaintiff's marks before the Registrar and the Malaysian courts as highlighted by learned counsel for the Plaintiff. [77] This brings into sharp focus the Plaintiff’s Marks’ distinctiveness and reputation. The greater the distinctiveness and reputation of the earlier mark, the greater the likelihood of confusion: see Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc [1998] ECR I- 5507; [1999] ETMR 1. The Plaintiff's Polo player device mark, by virtue of its extensive use and reputation, commands a wide penumbra of protection. [78] In my judgement, the average consumer encountering the Defendant's Application Mark on leather goods, handbags, wallets, or travel bags in Class 18 would, in my judgment, likely associate the mark with the Plaintiff's established brand. The polo player imagery, combined with the word "POLO," creates an overwhelming association with the Plaintiff. The addition of "PALOOZA" and the S/N L2vqC3xYakW6jC0ca6tmjA 35! ! multiplication of the number of polo players are insufficient to dispel this confusion.

Imperfect Recollection [79] Now, reverting to the discussion on imperfect recollection, learned counsel for the Defendant submitted that the doctrine of imperfect recollection is not applicable in the present case in relation to the goods, with significant overlap in items such as leather and imitation leather goods, including bags, wallets and accessories. The Defendant’s specification includes a wide range of goods such as handbags, trunks, school bags and leather straps while the Plaintiff’ goods include handbags, wallets, briefcases and other leather items. [80] Learned counsel for the Defendant placed reliance on the case of Skyworld Holdings Sdn Bhd & Ors v Skyworld Development Sdn Bhd & Anor [2022] 3 MLJ 426 (at page 438). There, the Court declined to place weight on imperfect recollection because the parties operated in starkly different spheres that is real estate development on the one hand, and tourism on the other—such that the prospective customers were unlikely to be deceived or confused by the shared element in the respective trade names. The Court in Skyworld Holdings held as follows: “[25] He further stated at paras 37 and 38: [37] …The plaintiffs here particularly the first plaintiff is basically involved in the business of real estate property development… The defendants on S/N L2vqC3xYakW6jC0ca6tmjA 36! ! the other hand are involved in the business of tourism… Notwithstanding that there are residential accommodation buildings planned to be built in the Sky World City project, I find that they are probably hotels to accommodate the tourists but not buildings for sale to the public…It can therefore be concluded that the prospective customers of the plaintiffs and defendants amongst the public at large are not likely to be deceived or confused by reason of the stark difference on the business of the respective parties. Simply put, the imperfect recollection to these customers is neither relevant nor cogent here as for (sic) as the trade name is concerned… [81] Premised on the above learned counsel submitted that the doctrine of imperfect recollection, even if applied, will not help the Plaintiff as the public who have a recollection of “POLO BY RALPH LAUREN” will not be deceived or confused to accept “POLOPALOOZA” as one and the same. Learned counsel argued that a possibility of confusion is not sufficient and there must be a real, tangible danger of confusion. [82] Learned counsel also relied on Hui Kuan Hoe (supra), where the Court of Appeal cautioned against stretching the concept of imperfect recollection to illogical limits. The Court held that similarity does not automatically translate into likely deception or confusion, particularly where the alleged common element is weak and the overall marks are materially different. On the facts there, the transposition of “Nido” into “LotteNidoo” was held insufficient to support a finding of likely confusion, and the High Court was criticised for isolating “Nido” and disregarding the remainder of the mark. The Court of Appeal in Hui Kuan Hoe held as follows: S/N L2vqC3xYakW6jC0ca6tmjA 37! ! “[4] Similarities between the appellant’s trademark and the respondent’s pre-existing trademark do not necessarily mean that they are likely to deceive or cause confusion. In the instant appeal, the only similarity is patently tenuous in that it merely consists of the transposition of the respondent’s trademark ‘Nido’ to six other alphabets to form ‘LotteNidoo’ which the appellant unsuccessfully applied to register. It is inconceivable, in our view, that simply because ‘Nido’ has been transposed to form ‘LotteNidoo’ it is likely to deceive or cause confusion. The learned High Court judge was clearly wrong to magnify the prominence of ‘Nido’ in isolation while at the same time totally disregarding the other alphabets which make up ‘LotteNidoo’. There was, therefore, a misapplication of the facts on the part of the learned High Court judge. It also follows that the doctrine of imperfect recollection was misapplied when ‘LotteNido’ was equated with ‘Nido’ simply on the possibility that some consumers who have a recollection of ‘Nido’ may be so deceived or confused to accept ‘LotteNidoo’ as one and the same. That would constitute stretching the doctrine to its illogical limits.” [83] On that basis, learned counsel submitted that the Plaintiff has not been able to produce any evidence to support its allegation that there is a real or tangible danger of confusion between the trademarks. [84] I have considered this point, and with respect I disagree with learned counsel’s contention. The doctrine of imperfect recollection is particularly pertinent here. Consumers do not typically have the opportunity to compare marks side by side. They carry in their minds an imperfect image of the marks they have previously encountered. S/N L2vqC3xYakW6jC0ca6tmjA 38! ! A consumer who has seen the Plaintiff's Polo player device mark and subsequently encounters the Defendant's Application Mark featuring polo players and the word "POLO" is highly likely to believe there is a connection between the two. [85] The Plaintiff aptly described the three critical elements common to both marks as the "Trinity Elements" — the visual depiction of polo players in action, the aural element of the word "POLO," and the conceptual conveyance of the sport of polo. I find this characterization to be apt and well-founded. [86] The confluence of all three Trinity Elements in the Defendant's Application Mark creates a composite impression that is inextricably linked to the Plaintiff's marks. It is not a case where one element might coincidentally overlap; rather, all three fundamental pillars of the mark's identity point directly to the Plaintiff's established marks. This cumulative effect is overwhelming and renders the likelihood of confusion inevitable. [87] To put it plainly: the Defendant's Application Mark looks like a polo mark (visual), sounds like a polo mark (aural), and means polo (conceptual). These are precisely the same impressions created by the Plaintiff's long-established and well-known polo player device mark. When applied to identical goods in Class 18, the conclusion is inescapable that the Defendant's Application Mark is likely to deceive or cause confusion among the relevant public. [88] Taking all the relevant factors together that is the visual, aural, and conceptual similarity of the marks, the identity or high similarity of S/N L2vqC3xYakW6jC0ca6tmjA 39! ! the goods, the common channels of trade, the reputation of the Plaintiff's marks, and the principle of imperfect recollection — I am satisfied that there exists a real and tangible likelihood that a substantial number of ordinary consumers would be confused or deceived into believing that the Defendant's goods originate from, or are economically linked to, or are associated with the Plaintiff. [89] In my judgment, the cumulative effect of these factors establishes that there is a real and substantial likelihood that the ordinary consumer would be deceived or confused into believing that the goods bearing the Defendant's Application Mark originate from, or are associated with, or are economically linked to the Plaintiff. The Defendant's Application Mark therefore offends Section 14(1)(a) of the TMA 1976 and ought to be refused registration. SECTION 19(1)(a) AND (b) OF THE TMA 1976 — IDENTITY OR NEAR RESEMBLANCE [90] I am further satisfied that the Defendant's Application Mark is so nearly resembling the Plaintiff's registered polo player device mark as to be likely to deceive or cause confusion, within the meaning of Section 19(1) of the TMA 1976. [91] As I have found at paragraphs [56] to [81] above, the Defendant's Application Mark bears a high degree of visual, aural, and conceptual similarity to the Plaintiff's registered mark. The goods specified in the Defendant's application are identical to, or of the same description as, the goods covered by the Plaintiff's registration in Class 18. S/N L2vqC3xYakW6jC0ca6tmjA 40! ! [92] Accordingly, the conditions for refusal under Section 19(1)(a) and

of the TMA 1976 are satisfied. THE REGISTRAR'S ERRORS [93] Having conducted my own independent assessment of the marks and the evidence, I find that the Registrar committed the following material errors: i. Flawed Application of the Rules of Comparison [94] As I have emphasised earlier, the Registrar's visual comparison was unduly focused on the numerical difference between the single polo player in the Plaintiff's mark and the three polo players in the Defendant's Application Mark. This approach fails to apply the established principles of trademark comparison which require the marks to be assessed as a whole, by reference to their overall impression and dominant features, rather than by a meticulous side-by-side dissection of individual elements. [95] The correct approach, as established in the seminal case of Pianotist Co Ltd's Application (1906) 23 RPC 774, requires the tribunal to consider the marks broadly, taking into account what strikes the eye and the ear. The tribunal must not undertake a minute, element-by-element dissection; rather, it must stand back and consider the overall impression that the marks would make upon the average consumer encountering them in the ordinary course of trade. S/N L2vqC3xYakW6jC0ca6tmjA 41! ! [96] Applying this principle, the dominant and striking feature of both the Plaintiff's registered mark and the Defendant's Application Mark is the polo player device — a rider or riders mounted on horseback, in dynamic motion, wielding mallets. This is what "strikes the eye" immediately. The numerical variation from one to three players is, in the context of the overall impression, a subsidiary detail. To the average consumer, the essential feature conveyed by the device element is the same that is a polo player or polo players in action. The Registrar's emphasis on the numerical difference elevated a minor distinguishing detail to the status of a decisive distinguishing factor, which is inconsistent with the established rules of comparison. ii. Failure to Properly Assess the Aural Comparison [97] The Registrar compared the Defendant's Application Mark aurally by juxtaposing "POLOPALOOZA" against "POLO BY RALPH LAUREN." With respect, this comparison is fundamentally flawed for two reasons. [98] First, the most relevant mark of the Plaintiff for comparison purposes is the polo player device mark registered in Class 18 under Registration No. 95009315. This mark does not contain the words "RALPH LAUREN." The Registrar ought to have appreciated that the Plaintiff's registered portfolio includes marks where the polo player device stands alone, and where the word "POLO" is used independently of the name "RALPH LAUREN." The aural comparison should therefore have been between the word element S/N L2vqC3xYakW6jC0ca6tmjA 42! ! "POLOPALOOZA" in the Defendant's mark and the word "POLO" as it is inherently associated with the Plaintiff's polo player device mark. [99] Second, even taking the comparison as framed by the Registrar, the leading and most prominent syllable of the Defendant's textual component is "POLO." It is trite law that the first word or first syllable of a composite mark tends to have the greatest impact on the consumer's perception. In London Lubricants (1920) Ltd's Application (1925) 42 RPC 264, it was held that the first part of a mark is generally the most important for purposes of distinction. Similarly, in Berlei Hestia Industries Ltd v. Bali Co Inc [1973] RPC 78, the principle was reaffirmed that the initial element of a mark exercises a disproportionate influence on the consumer's recollection. [100] The word "POLO" constitutes the entire first element of the Defendant's Application Mark. "PALOOZA" is a fanciful suffix that, while adding length to the mark, does not override the dominance of "POLO" as the leading aural element. A consumer hearing the mark is likely to latch onto "POLO" as the key identifier, particularly given the well-known status of the Plaintiff's "POLO" marks. The Registrar's failure to give due weight to this principle constitutes a material error in the aural comparison. iii. Failure to Give Due Consideration to the Plaintiff's Well-Known Mark and Reputation [101] The Registrar also erred in failing to give adequate consideration to the reputation and well-known status of the Plaintiff's marks in S/N L2vqC3xYakW6jC0ca6tmjA 43! ! Malaysia. The evidence before the Registrar, and now before this Court, establishes that the Plaintiff's "POLO" marks, including the polo player device, are internationally renowned and have been extensively used and promoted in Malaysia over several decades. [102] The Statutory Declaration of Anna Dalla Val affirmed on 1 August 2016 (Exhibit IAJ-8) and the Statutory Declaration of Anna Dalla Val affirmed on 1 December 2016 (Exhibit IAJ-10) provided extensive evidence of the Plaintiff's global and Malaysian presence, including:

The worldwide use of the "POLO" marks and the polo player device since the 1970s;

The extensive advertising and promotional expenditure in

The presence of Ralph Lauren retail stores and authorised dealers in Malaysia;

The substantial sales turnover in Malaysia;

The widespread consumer recognition of the "POLO" marks and the polo player device among the Malaysian public. [103] The Statutory Declaration of Lee Kok Hu affirmed on 14 October 2016 (Exhibit IAJ-9) further corroborated the Plaintiff's presence in the Malaysian market and the consumer recognition of its marks. S/N L2vqC3xYakW6jC0ca6tmjA 44! ! [104] It is well established in trade mark law that the greater the distinctive character and reputation of an earlier mark, the greater the likelihood of confusion: see Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc [1998] ECR I-5507. This principle has been adopted and applied in Malaysia. In Munchy Food Industries Sdn Bhd v. Kellogg Co [2009] 5 MLJ 25, the Court of Appeal held that the reputation and distinctiveness of the earlier mark is a relevant factor in assessing the likelihood of confusion. [105] The Plaintiff's polo player device is one of the most iconic and instantly recognizable marks in the fashion and consumer goods industry worldwide. It has acquired an enhanced distinctiveness through extensive and long-standing use. The penumbra of protection afforded to such a mark must necessarily be wider than that afforded to a mark of lesser reputation. A mark that closely resembles such an iconic mark — by adopting the same polo player imagery and incorporating the word "POLO" — is far more likely to be perceived by consumers as being connected to the Plaintiff. [106] The Registrar's failure to give adequate weight to the Plaintiff's reputation and the enhanced distinctiveness of its marks resulted in an incomplete and flawed analysis. This is a material error that warrants the intervention of this Court. iv. Failure to Consider the Principle of Imperfect Recollection [107] A further error in the Registrar's analysis was the failure to adequately apply the principle of imperfect recollection. This principle recognizes that consumers rarely have the opportunity to S/N L2vqC3xYakW6jC0ca6tmjA 45! ! compare marks side by side. Instead, they carry in their minds a general impression of marks they have previously encountered, and it is against this imperfect recollection that a subsequently encountered mark is judged. [108] The average Malaysian consumer who has previously encountered the Plaintiff's polo player device mark — whether on a handbag, a wallet, a piece of luggage, or in a retail store — carries away a general impression of a polo player on horseback with a mallet, associated with the word "POLO" and with luxury leather goods. When that same consumer subsequently encounters the Defendant's Application Mark — depicting polo players on horseback with mallets and bearing the word "POLO PALOOZA" — on identical goods in Class 18, the consumer is highly likely to believe, based on imperfect recollection, that the goods emanate from the same source or are otherwise economically connected to the Plaintiff. [109] The Registrar's analysis, which focused on point-by-point differences between the marks, failed to account for this imperfect recollection. When viewed through the lens of the average consumer's fading memory, the similarities between the marks overwhelm the differences. [110] It was brought to the attention of this Court, and indeed was a significant aspect of the Plaintiff's submissions, that the Plaintiff's polo player device mark in Class 18 has been the bedrock of several prior decisions by the Registrar of Trademarks in opposition proceedings involving similar marks. The Plaintiff submitted, and the S/N L2vqC3xYakW6jC0ca6tmjA 46! ! Defendant did not effectively rebut, that the Registrar in prior proceedings had consistently upheld the Plaintiff's opposition against marks that bore a polo player device, finding them to be confusingly similar to the Plaintiff's registered polo player device mark. The salient details of the past opposition hearing is deduced hereunder: Trademark No. Mark Date of Registrar’s Decision (“GD”) 09016893 22 April 2024 09012378 21 April 2024 09016875 17 February 2025 09016877 17 February 2025 [111] While I acknowledge that each case must be decided on its own facts and merits, and that the Registrar is not bound by previous decisions in the same way as a court is bound by precedent, there is nonetheless a legitimate expectation of consistency in administrative decision-making. Where the Registrar has in prior cases found that marks incorporating polo player devices are confusingly similar to the Plaintiff's polo player device mark, a S/N L2vqC3xYakW6jC0ca6tmjA 47! ! departure from that approach requires cogent reasoning and explanation. [112] In the present case, the Registrar's Decision did not adequately explain why the Defendant's Application Mark — which features not one but three polo players on horseback, together with the word "POLO" should be treated differently from other marks involving polo player devices that were previously found to be confusingly similar to the Plaintiff's mark. The absence of such reasoning further supports the conclusion that the Registrar's analysis was flawed. THE DEFENDANT’S TRADEMARK IS NOT DISTINCTIVE [113] For completeness I would like to address this point as well. One of the key findings made by the Learned Registrar of Trademarks was that the Defendant’s mark is sufficiently different and distinctive from the Plaintiff’s mark. [114] S.10 of the TMA 1976 provides that: “(1) In order for a trade mark (other than a certification trade mark) to be registrable, it shall contain or consist of at lease one of the followings particulars: …

an invented word or words; …

any other distinctive mark.

For the purposes of this section, “distinctive”, in relation to the trade mark registered or proposed to be registered in respect S/N L2vqC3xYakW6jC0ca6tmjA 48! ! of goods or services, means the trade mark be capable of distinguishing goods or services with which the proprietor of the trade mark is or may be connected in the course of trade from goods or services in the case of which no such connection subsists, either generally or, where the trade mark is registered or proposed to be registered, subject to conditions, amendments, modifications or limitations, in relation to use within the extent of the registrations.”

In determining whether a trade mark is capable of distinguishing as aforesaid, regard may be had to the extent to which –

the trade mark is inherently capable of distinguishing as aforesaid; and

by reason of the use of the trade mark or of any other circumstances the trade mark is in fact capable of distinguishing as aforesaid.” [115] Learned counsel for the Defendant’s argued that the Defendant’s Trademark consists of an invented “POLOPALOOZA” and the Plaintiff failed to prove that the Defendant’s Trademark is not distinctive. For the reasons I have alluded to in the preceding paragraphs, the Defendant’s Application mark cannot be regarded as distinctive in circumstances where its essential features are so closely associated with the Plaintiff's marks as to be likely to deceive or cause confusion. [116] The goods specifications of both parties' marks overlap substantially in that both cover leather goods, bags, wallets, purses, trunks, suitcases, travelling bags, and umbrellas in Class 18. The S/N L2vqC3xYakW6jC0ca6tmjA 49! ! hypothetical notional use of the respective marks extends to the full range of goods covered by their specifications. It is irrelevant that the Plaintiff may currently sell at a higher price point than the Defendant. The statutory test looks to the goods described in the specifications, not to the current business practices of the parties. [117] Moreover, even if market segmentation were a relevant consideration —which I do not accept for the purpose of the statutory test, the presence of confusingly similar marks on identical goods creates a real risk that consumers who encounter the Defendant's goods may mistakenly believe that they are a lower-priced line or an extension of the Plaintiff's brand. This type of confusion is particularly insidious because it not only misleads consumers but also dilutes the distinctiveness and reputation of the Plaintiff's well-known marks. [118] The argument by learned counsel for the Defendant that the parties target different consumer segments is also factually unpersuasive. The goods in Class 18 which includes bags, wallets, purses, and accessories are purchased by a broad cross-section of the public. There is no closed market for such goods. A consumer who is familiar with the Plaintiff's "POLO" brand and who encounters the Defendant's "POLOPALOOZA" goods bearing a polo player device in a retail environment could easily be confused into thinking that the goods originate from or are connected with the Plaintiff. P. CONCLUSION S/N L2vqC3xYakW6jC0ca6tmjA 50! ! [119] For the reasons set out in this judgment, I am satisfied that the Registrar committed material errors of law and fact in her analysis and decision. The Registrar failed to:

Give adequate weight to the Plaintiff's Polo player device mark registered in Class 18 as the most relevant mark for comparison;

Properly apply the established rules of trade mark comparison by focusing on the overall impression and dominant features of the marks, rather than engaging in a minute dissection of individual elements;

Correctly assess the visual, aural, and conceptual similarities between the marks;

Give due consideration to the Plaintiff's extensive reputation and the enhanced distinctiveness of its polo player device mark;

Properly apply the principle of imperfect recollection;

Act consistently with prior decisions of the Registrar in respect of similar marks involving the Plaintiff's Polo player device; and

Give paramount consideration to the public interest in preventing confusion and deception in the marketplace. [120] I am satisfied that the Defendant's Application Mark is so nearly resembling the Plaintiff's registered polo player device mark in Class 18 as to be likely to deceive or cause confusion within the meaning S/N L2vqC3xYakW6jC0ca6tmjA 51! ! of Sections 14(1)(a) and 19(1)(a) and (b) of the TMA 1976. The use of the Defendant's Application Mark on identical goods in Class 18 would be likely to lead members of the public to believe that the Defendant's goods originate from, or are associated with, or are economically connected to the Plaintiff. [121] The appeal is therefore allowed. The Registrar's Decision dated 15 January 2025 is hereby reversed. The Defendant's Trademark Application No. 2014010631 for the mark "POLOPALOOZA" with a device of three polo players in Class 18 is refused registration. [122] I award costs of RM 10,000.00 to the Plaintiff, to be paid by the Defendant. R. ORDERS [123] Accordingly, I make the following orders: i. The decision of the Registrar of Trade Marks dated 15.01.2025