The Polo/Lauren Company LP (“Polo”) recently filed a rectification petition before the IP Division of the Delhi High Court seeking removal of a copyright registration for the artwork titled ‘SPORTS POLO’, obtained by the respondent, Sandeep Arora, in 2021. Polo’s case was that it is the registered proprietor and user of the well-known trade mark, POLO SPORT, since 1967 along with a device mark of a “horse with a person riding it while flinging his club to hit a ball in the sport of polo”. It claimed that Mr. Arora’s copyright registration is an infringement of the copyright in its literary and artistic works, that Mr. Arora has misappropriated the words POLO and SPORT, with the only distinguishing feature being the number of horses featured in the parties’ rival logos, and that Mr. Arora’s work is not an “original” work under the copyright law. In his defense, Mr. Arora argued that his copyrighted work is substantially different from Polo’s marks, where the number of horses is different and the riders are not playing the game of polo.
On a comparison of the rival logos, the Delhi High court was of the view that the difference between the logos was minor and not significant enough to make Mr. Arora’s logo an “original” artistic work eligible to be registered as a copyright under copyright law. It observed that Mr. Arora’s logo is an imitation of Polo’s registered marks and opined that, while comparing the two marks/logos, the qualitative differences (as opposed to quantitative differences) have to be examined. It also emphasized the need for the Registrar of Copyright (“Registrar”) to hold an inquiry/ search of the Trade Marks Register to ensure that a proposed artistic work is not identical with, or deceptively similar to, a prior trade mark. Moreover, it stated that a copyright registration for a work which is not an original work would be an entry wrongly made on the register. Thus, the court directed the Registrar to cancel the copyright registration for Mr. Arora’s artwork.
The Polo/Lauren Company LP v. Sandeep Arora & Ors. Delhi High Court C.O. (COMM.IPD-CR) 4/2021 Order dated 01.02.2022