Ralph has been told to negotiate rather than sue.
The 30-year trademark battle between Ralph Lauren Corp. and the United States Polo Association is headed back to India after Judge Thomas Griesa of the U.S. District Court for the Southern District of New York this week rejected a complaint filed last October by Ralph Lauren Corp. against United States Polo Association Inc. and Arvind, its Indian apparel licensee. The complaint alleged unauthorized use of Polo’s single polo player mark and failure to provide the required disclaimers indicating that USPA isn’t affiliated with Ralph Lauren, as set forth in a settlement agreement reached in 2003.
The judge sent the case back for arbitration in front of a three-judge panel in Bangalore. He cited terms of the settlement that called for “any dispute, action, aim or controversy” between the two parties pertaining to apparel to be resolved through arbitration rather than litigation and, in cases involving a licensee or sublicensee, to be heard in the “principal place of business” of the licensee.
Arvind Brands, a division of Arvind Ltd., became a USPA licensee in 2007 and two years later was spun off into a subsidiary called Arvind Lifestyle Brands Ltd., which, according to court papers, was bound by the terms of the 2003 settlement as well.
In July 2013, Ralph Lauren Corp. initiated arbitration proceedings in Bangalore against USPA and Arvind, but not Arvind Lifestyle, alleging the misuse of trademarks and failure to provide proper disclaimers.
Arvind and Arvind Lifestyle countered with a suit against Ralph Lauren arguing that the designer’s firm lacked standing to enforce its Indian subsidiaries’ rights under the agreement. The Bangalore court in August 2013 agreed with Arvind’s contention and, when Ralph Lauren didn’t respond, the Indian arbitration proceeding was deemed to have been concluded.
Arvind and Arvind Lifestyle withdrew their suit in Bangalore in October 2013, by which time Ralph Lauren had filed the most recent complaint in the U.S., alleging, among other points, that it has been cast as “the target of a fraudulently conceived international shell game perpetrated by the USPA parties and Arvind” and pressing eight specific claims against USPA and Arvind.
However, the court rejected Ralph Lauren’s contention that the arbitration provisions of the 2003 settlement agreement had been negated by USPA’s quest for relief in Bangalore, rather than the U.S., and granted USPA’s request to resolve the matter through an arbitrator.
“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,” a spokesman for Ralph Lauren Corp. said. “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.”
Commenting on the procedural elements of the case, the spokesman noted that the company had begun arbitration proceedings against the defendants in India “claiming violation of its contractual rights. The USPA and its licensees went to court in India in an attempt to stop the arbitration and Ralph Lauren then brought an action in the United States. The U.S. District Court for the Southern District of New York issued a decision this week affirming that the proper forum for the dispute was arbitration in India.”
W. David Cummings, president and chief executive officer of the USPA Properties Inc., the licensing arm of USPA, said, “We believe Ralph Lauren’s underlying claims are both unnecessary and meritless. We have marketed our merchandise legally under our preexisting agreement with Ralph Lauren and have strict policies and procedures in place to ensure that our international licensees also abide by those parameters. We are confident in our position should Ralph Lauren elect to move forward with arbitration.”
Last year, the U.S. Court of Appeals upheld an earlier ruling that USPA could be stopped from using the “double horseman” logo on its fragrances despite the provisions of the settlement agreement covering apparel. In 2006, a New York federal jury found that the double horseman image would not be deemed to be infringing on Ralph Lauren Corp.’s trademarks if it contained text but that a solid double horseman without text could be counted as constituting infringement.