A judge in New York Federal Court dismissed a lawsuit instituted by Ralph Lauren Corp. against the United States Polo Association and other entities, including Arvind Inc., USPA’s Indian apparel licensee. Ralph Lauren claimed that USPA and Arvind violated a 2003 settlement agreement pertaining to the use of Ralph Lauren’s trademark of the mounted polo player. The District Court judge ruled that the case belongs in arbitration as per the settlement agreement and granted motions by USPA and Arvind to dismiss the complaint and compel arbitration.
Polo Player, Nacho Figueras, Wearing a Ralph Lauren Polo Shirt
This ruling is the most recent occurrence in a trademark battle that has been ongoing for nearly 30 years, initially brought on by USPA and its licensees against Ralph Lauren in 1984. The USPA instituted a lawsuit seeking declaratory judgment that a logo bearing a horse and rider image did not infringe on Ralph Lauren’s mounted polo player logo. Ralph Lauren then countersued for trademark infringement. The court in that case dismissed USPA’s motion and ruled that the USPA had in fact not only infringed on Ralph Lauren’s logo, but the use of the word ‘polo’ by USPA constituted trademark infringement as well.
In 2003, the two companies came to a settlement regarding the use of the word ‘polo’ and logos similar to Ralph Lauren’s polo player mark. The settlement granted UPSA rights to sell apparel, leather goods and watches that contained the word ‘polo’ on the products. However, this right is condition by the fact that USPA is required to disclaim that the products are not associated with Ralph Lauren in any way. Arvind became a licensee for USPA in 2007 and became bound to the provisions of the 2003 settlement.
The Two Logos
In July of 2013, Ralph Lauren attempted arbitration proceedings claiming that USPA and Arvind were not abiding by the settlement agreement. They argued that they had contacted both the USPA and Arvind over their belief that the Indian licensee was not using proper disclaimers as required by the settlement agreement.
USPA and Arvind then retaliated with a countersuit claiming a lack of standing and argued that Arvind had “demerged” from its parent company in 2009 and that any contracts that the parent company had to abide by did not apply to Arvind. The Bangalore court where arbitration proceedings had been instituted, agreed with Arvind. Ralph Lauren failed to respond in Bangalore court and instead instituted the present complaint in the U.S.
In addition to claiming a violation of the 2003 settlement provisions, Ralph Lauren argued that the defendants had waived their right to arbitration by instituting a lawsuit in Bangalore and that the Ralph Lauren was “the target of a fraudulently conceived international shell game perpetuated by the USPA parties and Arvind. The judge rejected this argument by stating that Ralph Lauren failed to provide any evidence of prejudice.
Thus, the arbitration provision stands, and Ralph Lauren, USPA and Arvind are required to go to arbitration proceedings in India to solve this matter.
U.S. Polo Association Shirt
A spokesman for Ralph Lauren spoke with WWD, stating, “The decision does not concern any of USPA’s alleged trademark rights and does not address the merits of the violations committed by USPA and its licensees in India. Ralph Lauren has asserted in various court proceedings that the USPA and its licensees continue to mislead the public by imitating our brand and capitalizing on the reputation and goodwill that Ralph Lauren has created over many decades. Ralph Lauren continues to vigorously pursue claims against the USPA and its licensees around the world for violation of its intellectual property and its contractual rights and will always defend its rights against infringement wherever it appears.”
It will be interesting to see what outcome the arbitration proceedings will have, considering Ralph Lauren already attempted to institute arbitration, but Arvind sued them for a lack of standing. Perhaps, now that a U.S. Court has deemed that the proper venue for this argument is arbitration in India, the two sides can come together and settle these issues. Can’t wait to see what happens!
- “Judge Puts Ralph Lauren, USPA Case in Arbitration,” Women’s Wear Daily.
- “Ralph Lauren, US Polo Trademark Row Sent To Arbitration,” Law360.com