The Polo/Lauren Company, L.P. v RENEW IMAGE SDN BHD (WA-24IP-43-12/2024)

The plaintiff filed an originating summons, seeking to set aside a decision dated 14 October 2024 by the learned Registrar of Trademarks (“Registrar’s Decision”). In the Registrar’s Decision, the learned Registrar dismissed the plaintiff’s notice of opposition (“Plaintiff’s Opposition”) S/N auSilffqakeUKlTQmsM2Yg **Note : Serial number will be used to verify the originality of this document via eFILING portal 3 against the defendant’s trademark application (“Defendant’s Application”).

After considering the evidence before the court and the submissions of learned counsel, the court allowed the originating summons. The reasons for this decision are set out below.

On 20 October 2004, the defendant filed the Defendant’s Application, being trademark application no. 04016140, to register the mark (“Defendant’s Mark”) in Class 25. On 6 March 2015, the plaintiff filed the Plaintiff’s Opposition, to oppose the Defendant’s Application.

In the Registrar’s Decision, the learned Registrar dismissed the Plaintiff’s Opposition, and allowed the Defendant’s Mark to proceed to registration.

The plaintiff contended that the Defendant’s Mark is deceptively and confusingly similar to the plaintiff’s marks registered in Class 25, and in particular, the following marks: a. Trademark no. 95009319, comprising the word “POLO” (“Plaintiff’s POLO Word Mark”); or S/N auSilffqakeUKlTQmsM2Yg **Note : Serial number will be used to verify the originality of this document via eFILING portal 4 b. Trademark no. M/097382, depicted as “ ”; and c. Trademark no. 95009325, depicted as “ ”. The marks in paragraphs (b) and (c) above shall collectively be referred to as the “Plaintiff’s Polo Player Device Marks”, while Plaintiff’s POLO Word Mark and the Plaintiff’s Polo Player Device Marks shall collectively be referred to as the “Plaintiff’s Marks”.

The plaintiff filed this action to set aside the Registrar’s Decision.

The findings of the learned Registrar in the Registrar’s Decision are based on the provisions of the Trade Marks Act 1976 (“TMA 1976”), as the Plaintiff’s Opposition was filed before the Trademarks Act 2019 came into force. C. The Registrar’s Decision

The learned Registrar dismissed the Plaintiff’s Opposition on, inter alia, the following grounds: S/N auSilffqakeUKlTQmsM2Yg **Note : Serial number will be used to verify the originality of this document via eFILING portal 5 a. The Defendant’s Mark is not confusingly similar to the Plaintiff’s Marks; b. There is no real tangible risk that the purchasing public exercising reasonable attention would be confused between the Defendant’s Mark and the Plaintiff’s Marks; and c. The Defendant’s Mark is distinctive. D. Issues

The Registrar’s Decision gives rise to two main issues, which were considered by the court in the final determination of this matter: a. Whether the Defendant’s Mark is identical or similar to the Plaintiff’s Marks, so as to be likely to deceive or cause confusion to the public; and b. Whether the Defendant’s Mark is distinctive. E. Considerations Issue 1: Is the Defendant’s Mark identical or similar to the Plaintiff’s Marks?

The first issue considered by the court is whether the Defendant’s Mark is identical or similar to the Plaintiff’s Marks, so as to be likely to deceive or cause confusion to the public. S/N auSilffqakeUKlTQmsM2Yg **Note : Serial number will be used to verify the originality of this document via eFILING portal 6

The prohibition against the registration of a trademark that is confusingly similar to another trademark is set out in section 14(1)(a) of the TMA 1976. Section 14(1)(a) states that: “(1) A mark or part of a mark shall not be registered as a trade mark –

if the use of which is likely to deceive or cause confusion to the public or would be contrary to law; …” (emphasis added) [12] To support its contention that the Defendant’s Mark is likely to deceive or cause confusion to the public, the plaintiff relied on Yong Teng Hing b/s Hong Kong Trading v Walton International Ltd [2012] 6 MLJ 609, where the Federal Court considered section 14(1)(a) of the TMA 1976, and held that: “[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 our s 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 S/N auSilffqakeUKlTQmsM2Yg 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. [27] Confusion and deception as envisaged by s 14(1)(a) of the Act in our view is a question of fact and degree.” (emphasis added) [13] Applying the test in Yong Teng Hing, the court considered whether the use of the Defendant’s Mark would cause a number of persons to wonder whether it might be the case that the plaintiff’s products and the defendant’s products come from the same source. This, as highlighted in Yong Teng Hing, is a question of fact and degree. [14] In this regard, in assessing the similarities between the features of the Defendant’s Mark with the Plaintiff’s Marks, and the likelihood of deception and confusion to the public arising from the use of these marks, the court finds that the learned Registrar fell into material error in four distinct respects, each of which undermines the integrity of the ultimate conclusion reached. [15] First, the learned Registrar did not analyse each of the Plaintiff’s Marks individually, when comparing them with the Defendant’s Mark. Instead, in carrying out the comparison, the Plaintiff’s Marks were S/N auSilffqakeUKlTQmsM2Yg considered as a whole. This is clear in the following paragraphs of the Registrar’s Decision: “7. … The Applicant's mark consists of the words ‘Polo JP Exclusive' and a device of polo player. In contrast, the Opponent's marks include the wordmark 'POLO' and a polo player device, which are associated with different word combination such as, ‘POLO BY RALPH LAUREN’, ‘POLO RALPH LAUREN’, ‘POLO JEANS CO.’ and ‘RALPH LAUREN’, as well as various insignia devices …

… Phonetically, the Applicant's mark will be pronounced as 'Polo JP Exclusive’ while the Opponent's mark may be referred to as either ‘POLO BY RALPH LAUREN’, ‘POLO’, ‘POLO RALPH LAUREN’, ‘POLO JEANS CO.' and 'RALPH LAUREN’ … (emphasis added) [16] The above paragraphs demonstrate that the learned Registrar considered all the Plaintiff’s Marks as a whole, including both the Plaintiff’s POLO Word Mark and the Plaintiff’s Polo Player Device Marks, without identifying which specific mark was being compared with the Defendant’s Mark. [17] In Rovio Entertainment Ltd v Kimanis Food Industries Sdn Bhd [2015] 5 SLR 618, the question arose as to whether, in engaging in a similarity comparison, the court may combine separately registered S/N auSilffqakeUKlTQmsM2Yg marks and consider them in a similar way as a composite mark. The Singapore High Court held that two separately registered marks (involving the “ANGRY BIRDS” marks) cannot be combined so as to form a single composite mark, and used as a comparison with an opposing mark. [18] In the present case, the learned Registrar fell into error in comparing the Plaintiff’s Marks collectively with the Defendant’s Mark. This approach effectively resulted in the Plaintiff’s Marks being treated as a single composite mark, which cannot be used as a comparison with the Defendant’s Mark. [19] Second, and as a direct consequence of the first misdirection, the learned Registrar failed to appreciate that when each of the Plaintiff’s Marks is properly considered on its own, the similarities between the Defendant’s Mark and the Plaintiff’s Marks would have been readily apparent. In this regard, the Defendant’s Mark: a. Had adopted and incorporated the word “POLO” which is a textual mark identical to the Plaintiff’s POLO Word Mark; b. Is aurally similar to the Plaintiff’s POLO Word Mark; and c. Is visually similar to the Plaintiff’s Polo Player Device Marks. [20] Third, the learned Registrar failed to consider conceptual similarity, which forms an integral component of the comparison exercise. S/N auSilffqakeUKlTQmsM2Yg Both the Defendant’s Mark and the Plaintiff’s Marks evoke the same underlying concept – namely, the sport of polo, represented through the imagery of a mounted player wielding a polo mallet. This shared concept reinforces the likelihood of association in the mind of the average consumer. [21] Fourth, the learned Registrar found that the additional verbal elements in the Defendant’s Mark, namely the words “JP EXCLUSIVE” – which are absent from the Plaintiff’s Marks – create a distinction between the Defendant’s Mark and the Plaintiff’s Marks. This finding is set out in paragraph 8 of the Registrar’s Decision: “8. The Applicant's mark, "Polo JP Exclusive," incorporates additional verbal elements "JP Exclusive," which are absent in the Opponent's marks. This additional work, as well as the distinct visual differences, create clear phonetic and visual distinction between the marks. When comparing the overall impression created by the marks. I find that they are sufficiently distinguishable.” [22] The court finds that the learned Registrar failed to properly appreciate that the inclusion of the letters “JP” and the word “EXCLUSIVE” in the Defendant’s Mark does not materially alter the overall impression of the mark. The dominant and distinctive features of the Defendant’s Mark are the word “POLO” and the polo player device. By contrast, the words “JP EXCLUSIVE” are scarcely discernible. The letters “JP” are devoid of any clear meaning and are unlikely to register in the minds of the relevant public, whilst the word “EXCLUSIVE” is plainly laudatory in nature and lacks distinctiveness. S/N auSilffqakeUKlTQmsM2Yg [23] In the circumstances, the learned Registrar had erred in giving equal weight to the words “JP EXCLUSIVE”, with the word “POLO” and the polo player device. It is this misdirection that ultimately led to the erroneous conclusion that the Defendant’s Mark and the Plaintiff’s Marks are sufficiently distinguishable. [24] Ultimately, the court finds that on the balance of probabilities, the similarities between Defendant’s Mark and the Plaintiff’s Marks are likely to mislead and confuse the public into the mistaken belief that the Defendant’s Mark and the Plaintiff’s Marks originate from the same source or that the Defendant’s Mark is linked to the Plaintiff’s Marks. [25] To support its case that the marks are not similar, the defendant relied on Consitex SA v TCL Marketing Sdn Bhd [2008] 3 MLJ 574, involving an action against a defendant for the use of the “Emmer Zecna” mark, which the plaintiff claimed infringed its registered trademarks, “Ermenegildo Zegna” and “Zegna”. The High Court dismissed the plaintiff’s claim, holding that there was no likelihood of confusion between the two marks, in view of the differences in the market segments between the plaintiff and the defendant and hence, the consumer perception of the two brands. The court also found that the “Emmer Zecna” mark and the “Ermenegildo Zegna” and “Zegna” marks are visually and aurally different. [26] With respect, this court is unable to agree with the approach taken in Consitex on the assessment of the likelihood of confusion. The finding of the High Court that “Emmer Zecna” is sufficiently dissimilar from “Ermenegildo Zegna” and “Zegna” appears to have given insufficient weight to their phonetic and structural similarities which, in practical S/N auSilffqakeUKlTQmsM2Yg terms, are often the most enduring in a consumer’s mind. Further, the approach unduly downplays the well-established principle that the court must consider the overall impression conveyed by the marks, bearing in mind imperfect recollection and the perspective of the average consumer. [27] In this court’s judgment, the proper approach is to focus on whether the essential and distinctive features of the Plaintiff’s Marks would result in the average consumer being likely to be misled into believing that the defendant’s products originate from or are connected with, the plaintiff – as emphasised in Yong Teng Hing. The court finds that the differences in market positioning, price points or target consumers do not, in and of themselves, negate the likelihood of confusion, particularly in modern commercial conditions where brand diffusion across segments is commonplace, with the same brands appearing at different price levels. [28] Viewed in this light, the present case falls squarely within the mischief which trademark law is intended to prevent. The Defendant’s Mark captures the dominant and memorable features of the Plaintiff’s Marks, thereby creating an immediate and lasting association in the minds of consumers. This amounts to an attempt to ride upon or “piggyback” on the goodwill of the plaintiff, which the law should not permit. Issue 2: Is the Defendant’s Mark distinctive? [29] The second issue arising is whether the Defendant’s Mark is distinctive. Section 10 of the TMA 1976 requires a trademark to be S/N auSilffqakeUKlTQmsM2Yg distinctive, for it to be registrable. The requirement of distinctiveness is further elaborated in sections 10(2A) and 10(2B), which provide: “(2A) For the purposes of this section, "distinctive", in relation to the trade mark registered or proposed to be registered in respect of goods or services, means the trade mark must 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 registration.

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.” (emphasis added) [30] From the foregoing provisions, it is clear that, for the Defendant’s Mark to be registrable, it must be capable of distinguishing the defendant’s goods from those of other traders with whom the defendant S/N auSilffqakeUKlTQmsM2Yg has no connection, including, in particular, the plaintiff’s goods. Such distinctiveness may be inherent in the Defendant’s Mark itself, or it may arise through use, whereby the mark has come to distinguish the defendant’s goods in the course of trade. [31] The court is unable to agree with the defendant’s submissions that the Defendant’s Mark satisfies the requirement of distinctiveness under section 10 of the TMA 1976. [32] The application of sections 10(2A) and 10(2B) of the TMA 1976 must be grounded in commercial reality. A mark cannot be said to be “capable of distinguishing” if its essential features are such as to call to mind an earlier registered mark that may be commonly known. The court finds that distinctiveness, in this sense, cannot be established by the mere presence of additional elements or embellishments in the Defendant’s Mark, if the dominant and memorable components of the mark remain substantially similar to those of the Plaintiff’s Mark. [33] The defendant relied on W & G du Cros’ Application [1913] 30 RPC 660, where the House of Lords held that in interpreting the requirement of distinctiveness, the applicant’s chances of success are largely dependent on whether other traders are likely, in the ordinary course of business and without improper motive, to wish to use the same or similar marks. However, this principle, properly understood, does not assist the defendant. Where a trader adopts a mark which contains the essential features of an earlier-registered mark, it cannot readily be said that such adoption is one which other traders would, in the ordinary course of business and without improper motive, be entitled or inclined to make. On the contrary, such adoption suggests an attempt, whether S/N auSilffqakeUKlTQmsM2Yg consciously or not, to benefit from the existing reputation attached to those features. [34] Further, the defendant’s assertion that the Defendant’s Mark is inherently distinctive by reason of a “unique combination” of elements cannot be sustained. The law is clear that the court must look at the mark through the eyes of the ordinary consumer, who retains an imperfect recollection of the mark (see Ortus Expert White Sdn Bhd v Nor Yanni bt Adom [2022] 2 MLJ 67). From this perspective, the court finds that it is the dominant and distinctive elements which assume significance. In the present case, those elements (the word “POLO” and the polo player device) are substantially similar to the Plaintiff’s Marks, with the additional feature relied upon by the defendant (the words “JP EXCLUSIVE”) being secondary and insufficient to dispel the overall impression of similarity. The learned Registrar’s focus on differences, without due regard to the common and dominant features, is therefore misplaced. [35] Further, the defendant’s reliance on alleged extensive use does not advance its case. Evidence of use, even if substantial, cannot cure a fundamental lack of inherent distinctiveness where such use operates in the shadow of an earlier mark. In such a situation, the association formed in the minds of the public may well be one of connection with the plaintiff, rather than the independent distinctiveness of the Defendant’s Mark. What is presented as evidence of acquired distinctiveness may, in truth, be evidence of successful association or “piggybacking” upon the plaintiff’s goodwill. [36] In this regard, the defendant’s contention that the public has come to associate the Defendant’s Mark exclusively with the defendant S/N auSilffqakeUKlTQmsM2Yg must be treated with caution. Where the mark incorporates or mirrors the essential features of the plaintiff’s brand, any such association cannot be assumed to be independent. The law does not permit a trader to build distinctiveness by trading upon the reputation of another, and thereafter rely on that very association to justify registration. [37] In the premises, I find that the Defendant’s Mark does not fulfil the requirement of distinctiveness under section 10 of the TMA 1976. The learned Registrar’s conclusion to the contrary cannot be sustained. F.

[38] In light of the court’s findings (a) that the Defendant’s Mark is identical or similar to the Plaintiff’s Marks, so as to be likely to deceive or cause confusion to the public; and (b) that the Defendant’s Mark is not distinctive, the court allowed the originating summons, with costs. Dated 24 April 2026 ADLIN ABDUL MAJID Judge High Court of Malaya Kuala Lumpur S/N auSilffqakeUKlTQmsM2Yg Counsel: Plaintiff : Sukumar Karuppiah (together Sarita Menon and George Mark Amirtharaj) of Messrs. Sukumar Karuppiah Defendant : Indran Shanmuganathan (together with Jyeshta Mahendran and Elisia Engku Kangon) of Messrs. Shearn Delamore & Co) S/N auSilffqakeUKlTQmsM2Yg