Los Angeles -L’Oreal USA Inc., licensee of Polo Ralph Lauren Holdings Inc.’s trademark for use on fragrances, told the Second Circuit Friday that the U.S. Polo Association’s link to the sport of polo does not give it license to infringe Ralph Lauren’s famous trademarks.
During the oral arguments in Manhattan, counsel for L’Oreal said that the U.S. Polo Association should not be allowed to use its connection with the sport of polo as an excuse for infringing the famous horse-and-rider logo.
The U.S. Polo Association instigated the dispute when it filed a declaratory judgment lawsuit against Ralph Lauren in November 2009, asking the court to rule that it can use its logo on men’s fragrances. Judge Robert W. Sweet ruled against the declaratory judgment in May 2011.
The fragrance-branding dispute is just another battle in a long history of legal clashes between the two entities. U.S. Polo Association and Ralph Lauren have been litigating trademark infringement issues since 1984.
In 2003 the two companies were able to come to a partial settlement in which the U.S. Polo Association obtained the right to sell clothes with its logo which features two men on horses superimposed on each other. However, a lower court found the U.S. Polo Association branching into fragrances, a business Ralph Laruen has been in since the 1970s, infringed on Ralph Lauren’s trademarks and it entered an injunction prohibiting the association from selling fragrances with its logo.
L’Oreal argued that the U.S. Polo Association has been trying to encroach upon the Ralph Lauren trademarks for years and asked the Second Circuit to uphold the lower court’s ruling.
L’Oreal accused the U.S. Polo Association of attempting to “ride the coattails of one of the most famous companies on earth” and argued that it should not be allowed to profit from the time and effort Ralph Lauren has put into growing its brand to what it is today.
The U.S. Polo Association argued that issuing an injunction prohibiting it from entering the fragrance business is overbroad. It argued that perfumes and clothes are related categories that are often marketed together in ad campaigns and placed near each other in stores. If the association is allowed to sell clothes, it argued it should also be allowed to sell fragrances.