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News blog2 October 2023European Innovation Council and SMEs Executive Agency3 min read

Beverly Hills Polo Club loses a trade mark battle - Dunkin' Donuts sues Vapin’ Donuts for trade mark infringement

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Beverly Hills Polo Club's legal battle against Royal County of Berkshire Polo Club ends in disappointment

Over the past few years, and after much litigation in various countries, the owner of the Beverly Hills Polo Club, Lifestyle Equities, has attempted to persuade trade mark courts that there is a likelihood of confusion between its trade mark and that of the Royal County of Berkshire Polo Club. Club. In 2019, for instance, it won a similar case in the Delhi High Court against Berkshire Polo Club.

The dispute spread around the world, as the plaintiffs sought a resolution in the UK, EU, several South American countries and the United Arab Emirates, although in the end both sides agreed to apply UK and EU law to all territories.

In the most recent case, on 19 July, the UK High Court dismissed Beverly Hills Polo Club's trade mark infringement and passing off claims against the Royal County of Berkshire Polo Club.

One of the key issues that led to the dismissal of the case was the fact that both parties had co-existence agreements with Ralph Lauren, owner of the renowned Polo Ralph Lauren brand. In addition, they recognised that the market for polo-related products was “saturated” and that the US Polo Association was also a leading brand in the market.

In light of all the facts, the court dismissed both the trade mark infringement and passing off claims. In the case of indirect infringement, it was ruled that, due to the saturation of the market and the presence of elements of competing brands, consumers were unlikely to perceive the Berkshire Polo Club sign as a sub-brand or an update of the mark. As regards direct infringement, the Court determined that there was no significant confusion in any territory, in particular in the UK, where consumers could easily distinguish the signs by the specific words they contained.

In the European context, even though Beverly Hills Polo Club had gained recognition, especially in Italy, for its menswear and some childrenswear, the situation was complicated by the presence of Ralph Lauren Polo on the market. In the end, the court concluded that there was no infringement of Beverly Hills Polo Club's trademarks in Italy or in any other country of the European Union.

 

Dunkin' Donuts Sues Producer of 'Vapin' Donuts' for Trade Mark Infringement

Dunkin' Brands Group Inc, parent company of America's largest iconic coffee and doughnut brand, Dunkin' Donuts, filed a lawsuit in the Eastern Federal Court of New York on 22 September. The company accuses Singh Handicraft Corp, an e-cigarette manufacturer, of infringing its trade mark rights by marketing products under the name "Vapin' Donuts", asserting remarkable similarities to its own logo and distinctive flavours.

In the lawsuit, Dunkin' alleges that Singh used a trade mark "nearly identical" to its own in connection with disposable iced coffee cups and glazed donut-shaped frothers. In addition to sharing a logo with a "distinctive orange and pink colour scheme and rounded font", Dunkin' claims that the Vapin' Donuts products have flavours that are virtually identical to its most popular coffees, including White Mocha and Iced Cappuccino, and that they have deliberately designed their products to confuse consumers, upholding that "the only reason they purchase Defendants' products is out of affection for Dunkin'".

Dunkin' aims to remedy this trade mark infringement through a series of legal actions. First, they have requested a jury trial, which could result in a verdict determining whether Singh has in fact infringed their trade mark rights. Additionally, they have sought injunctive relief to halt the marketing of Vapin' Donuts products and to compel the defendants to compensate for the damages caused by the alleged infringement.

It is to be noted that, although Singh Handicraft Corp applied for a federal trade mark for "Vapin' Donuts” in the U.S. Patent and Trademark Office in March, this process has not yet been resolved, which adds an additional layer of complexity to this case.

 

 

 

Details

Publication date
2 October 2023
Author
European Innovation Council and SMEs Executive Agency