Why Could Polo Ralph Lauren/Burberry Clone Get Trademark In Hong Kong?

The outdoor advertisement of Polo Santa Roberta no longer has the
Burberry tartan pattern background

"Buy one get one free"
Is this what luxury goods manufacturers such as
Polo Ralph Lauren and Burberry want to be associated with? 

Here you can see the ® of registered trademark on the promotional poster

Still Polo Santa Roberta bags use Burberry-like tartan patterns

Polo Santa Roberta shop seen yesterday in Mongkok, Hong Kong. Remember my January 2011 posting when I thought that these kinds of shops were closed in Hong Kong, see here.

Polo Santa Roberta uses the ® of registered trademark in their promotional material. After checking the database of the Intellectual Property Department of Hong Kong, see here, they indeed have registered their brand (which is in my eyes controversial). 

The Polo/Lauren company registered (actual registration) its logo with the polo player with a stick high in the air in combination with the words 'Polo' and trademarks in July 12, 1994 in class 25 and July 17, 1996 in class 42. In February 2, 1999 was the actual registration of the word mark Polo for class 25. 

Santa Roberta Polo & Racoquet Club (owned by Hampton, Winter and Glynn), actual registration for class 25 on January 27, 2006. stick low. See the spelling of Racoquet. 

Polo Santa Roberta (owned by Santa Roberta Polo & Racquet Club International Limited), actual registration for classes 3 and 25 July 7, 2009, stick high in the air. 

I am interested to know why the Trade Mark Registry of the Hong Kong Intellectual Property Department did not refuse the registration of Polo Santa Roberta based on article 12 (3) Trade Marks Ordinance: 

"A trade mark shall not be registered if -

(a) the trade mark is similar to an earlier trade mark;

(b) the goods or services for which the application for registration is made are identical or similar to those for which the earlier trade mark is protected; and 

(c) the use of the trade mark in relation to those goods or services is likely to cause confusion on the part of the public." 

Not only The Polo/ Lauren company's trademark is harmed, but the registered designs of Burberry tartan patterns as wel

Polo Santa Roberta shirts are no longer sold at the Ladies Market (女人街) in Mongkok. Instead "Polo" shirts are sold.

Polo shirts with the iconic Polo player logo
 at sale at Ladies Market (女人街), Mongkok, Hong Kong

One "Polo" shirt for 45 Hong Kong dollar (a little over 4 euro),
three for 120 Hong Kong dollar (almost 11 euro)

During the Tang dynasty, early 8th century CE, polo was a popular sport
This figurine can be found at Musée Guimet in Paris 

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IP Dragon Checks International Clothes Market in Beijing: "Waterbedding" Effect of Trademark Enforcement

Building of the International Clothes Market 

While all eyes are fixed on Silk Market in Beijing, IP Dragon focuses its attention to the International Clothes Market in Beijing to check whether counterfeit apparel and bags were on sale.

Let's first take a look at the notorious Silk Market. Tim Smith of Rouse Beijing sent his intern Dominic to take a look at Silk Market. He witnessed that the Beijing Administration for Industry and Commerce (AIC) had put a notice on the wall in Chinese that stated that merchants in Silk Street that were caught selling counterfeit items bearing a list of foreign brands, including Prada, Chanel, Burberry, Givenchy, Boss, Hermes, Miu Miu, North Face would be subject to administrative penalties. If the landlord knowingly permitted the sale of any such goods they were held contributorily liable and it was made clear that they be subject to administrative measures and criminal punishment. It was Dominic's observation that no counterfeit products of the trademarked brands that had filed lawsuits against the landlord, and whose names were mentioned on the notice were on display in Silk Street.

IP Dragon went to the International Clothes Market (金jin 开kai 俐li 德de 国guo 际ji 服fu 装
zhuang 市shi 场chang), which is located near the Beijing Zoo. That it is not hard to find counterfeit products at the second floor of the International Clothes Market is an understatement: counterfeit use of famous foreign brands is omnipresent. From adidas sweaters with hood for 20 RenMinBi (a little over 3 dollar) to North Face jackets for 80 Renminbi. Robe di Kappa, Calvin Klein (but then written as Calvin Kiein), Levi's, Björn Borg. I am not sure whether the design of the pattern on the adidas sweater was also copied. The counterfeit manufacturers also expand the model and product range of famous brands. For example a non-existent LV bag model and “Louis Vuitton” underwear. Text continues below.

The area was patrolled by a police officer. But it seemed not to be his priority. The landlord liability cases in 2005, 2006 and 2010 have shown that private companies can do something about the counterfeit problems at markets by suing the landlord (owner) of the market and the second-hand landlord (the market management company). Check the excellent presentation of Dr. James Luo, Managing Partner of Beijing's Xiang Kun Law Firm about the subject, here. The question is whether the problem just moves away from a place where it seems contained to other places, just like a waterbed. Are the counterfeit products of these active brands not sold in Silk Street, but via a plethora of other channels?

"Calvin Kiein"

"North Face" jackets for 80 RMB

"adidas" sweater for 20 RMB

Robe di Kappa

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Beijing's Silk Market

IP Komodo’s friend Tim Smith of Rouse was curious to know what was happening at the famous Beijing Silk Market. He asked his intern Dominic to take a look and here is what they found. Large public notices appear around the market issued by the Beijing Administration for Industry and Commerce, concerning counterfeit goods. The notices (in Chinese only) state that any merchants in Silk Street caught selling any items bearing any of a finite list of famous foreign brands (Prada, Chanel, Burberry, Givenchy, Boss, Hermes, Miu Miu, North Face etc.) would be subject to administrative penalties, as all such articles would be counterfeit. Further, the management of the Silk Street shopping plaza would, if it was shown to have knowingly permitted the sale of any such goods, be subject to administrative measures and criminal punishment. These are all brands which we believe were involved in civil litigation against the Silk Market management.

There are also large red banners in Chinese and English reading "protect intellectual property rights - be law-abiding vendors" and "embrace national brand - respect intellectual property right". There were red sign boards displayed above the aisles every few metres or so in English advising customers that if they had any concerns with the merchandise they had purchased they could contact the customer service desk, call a telephone hotline or send the details of their complaint to a dedicated email address.

But a look around revealed many articles from jackets and shirts to belts and watches bearing brands such as D&G, Giorgio Armani, Adidas, Nike, Ralph Lauren and Abercrombie, all on unabashed display. Few of the brands listed in the notice, however, were seen. Coincidentally these all appear to be companies which were plaintiffs in civil court actions against the market in recent years. The result of the cases is that those brands who went to court appear to have succeeded in proving secondary liability against the landlord, so he ensures their products are not sold there. But those who have not litigated do not appear to be in that position. Further pending litigation is seeking to widen the landlord's liability further.

Guest post by IP Komodo Dragon

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The lizard's weekly China news roundup

IP Komodo hears righteous indignation expressed by bosses at Beijing's famous Silk Market on Wednesday at a United States trade report that accuses the mall of being "notorious" for fake goods. A Ms Hu stated to the press “I don't care about what any other media is saying about (the Silk Market). We're doing our best to fight against fake goods." 80 percent of Silk Market patrons are tourists. "The guilt for fake goods is shared between the buyer and the seller," she added. During a crackdown in October 2009, authorities found copies of Gucci, Coach and Adidas ready available and the raid led to the arrest of the mall's then-manager Wang Zili, who was charged with allowing the sale of fake goods and taking bribes. IP Komodo would like to hear from anyone who has visited the market in 2011.

Meanwhile in Guangzhou the sale of counterfeit products thrives: China-Africa Commercial Plaza has been required to close after authorities investigated and seized more than 7,600 products, including watches, garments, bags, sneakers, perfumes, cell phones, notebook computers and small household appliances - fake brand names included Rolex, Rado, Citizen, Swatch, LV, Gucci, Hugo Boss, Dior, Polo, Nokia, Sony, Burberry and Apple. Investigators looked into the sales of the counterfeit products on Feb 20 and 21. Fourteen stores in the plaza were believed to have infringed IPRs.

China's food and drug watchdog Tuesday vowed a "ruthless" crackdown on the production and sales of substandard health foods and cosmetics this year. Bian Zhenjia, deputy director of the State Food and Drug Administration said at a national conference that despite stepped-up supervision on the sector last year, the country's health food and cosmetics markets still faced many quality problems. IP Komodo notes a similar problem in his home in Indonesia where echoing the problem in China a couple of years back, a tainted milk scandal has Indonesian consumers panicking over food safety.

WIPO will be delighted at this: Chinese lawmakers on Wednesday began reviewing a revised draft law on the country's intangible cultural heritage (or to give it an acronym ICH). The draft law was submitted to the Standing Committee of the National People's Congress, China's top legislature, for its third reading. This is the first attempt by China to enact a law that safeguards heritage of historical, literary, artistic or scientific value. IP Komodo senses endless seminar opportunities.

Guest post by IP Komodo Dragon

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Polo Santa Roberta "Original" Mix of Ralph Lauren's Polo Brand And Burberry Tartan Pattern

Spotted today in Nathan Road, Mong Kok, Hong Kong: a shop with bags that carry the brand Polo Santa Roberta. Sounds very similar to the brand of Ralph Lauren; Polo and it looks very similar to the tartan pattern of Burberry.

Ai-ah! Another knock-off using the same ingredients: see Marco Polo Hiuui, here.

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3 of Baker McKenzie's Cases Elected By Supreme People's Court As 2006 Top 10 IPR Cases

Three of the ' Top ten cases' in 2006 elected by the Supreme People's Court concerns cases won by Baker & McKenzie:

• Sony Corporation versus Guangzhou Top Power Electronics Co., Ltd.;
• Starbucks versus Shanghai Xinbake Coffee Shop Ltd;
• Prada, Chanel, Gucci, Burberry and Louis Vuitton versus Beijing Xiushui Haosen Clothing Market.

IP Dragon congratulates Mr. Joseph Simone and his colleages at Baker & McKenzie with their victories.

Read more about these cases on the site of Baker & McKenzie here. The China Daily mentions these cases were foreign companies won to assert that "everone's equal on IPR", read here.

UPDATE: Top Tens also popular with SAIC and GAC

Not only the Supreme People's Court has brought together a top ten of IPR cases, so did the State Administration for Industry and Commerce (SAIC): "one case involved two Beijing companies that fraudulently took application fees from firms wanting to be considered as the "most valuable brand names" by the organizing committee of the 2008 Beijing Olympics. Their scam has been listed among the top 10 "typical IPR violation cases" in 2006." Read the Xinhua article via People's Daily Online here.

The 'Top Ten Cases of IPR Protection by General Administration of Customs (GAC)' of 2006 were:

1. Huangpu Customs unearthed counterfeit old cell phones of Motorola and Philips;
2. Xiamen Customs investigated a large number of counterfeit LINING clothes;
3. Shenzhen Customs uncovered counterfeit "Marlboro" cigarettes;
4. Beijing Customs found out fake "Pfizer" drugs in airport clearance;
5. Changsha Customs investigated batteries counterfeiting the trademark "DURATA";
6. Qingdao Customs captured fake "SHTEX" (P/C) Polyester/Cotton dyeing fabric for export;
7. Shanghai Customs confiscated several continual exports of fake "DIAMOND" inner tubes for bicycle;
8. Hangzhou Customs cracked down on polo shirts infringing the trademark "FIFA";
9. Ningbo Customs captured fake "TIGER HEAD" dry cells;
10. Tianjin Customs seized 55,000 counterfeit goods.

Read more about it here.

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