The ongoing battle between Ralph Lauren Corp. and United States Polo Association entered its fourth decade with the resolution of a dispute with USPA’s Indian licensee and the continuation of a trademark case in New York.
Arvind Lifestyle Brands Ltd., the USPA licensee, informed the Bombay Stock Exchange Monday that it had agreed to pay Ralph Lauren $3.2 million after what it termed “good faith discussions” resolved allegations that Arvind had failed to comply with a 2003 agreement calling for USPA merchandise to provide disclaimers indicating that USPA isn’t affiliated with Ralph Lauren.
The settlement, reached after Judge Thomas Griesa of the U.S. District Court for the Southern District of New York sent the case back to Bangalore for arbitration before a three-judge panel. The settlement involved no admission of wrongdoing by any of the parties.
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Griesa cited the 2003 agreement in his decision and its requirement that trademark disputes generally revolving around similarities between Polo’s polo player logo and USPA’s double horseman mark,” be resolved through arbitration rather than litigation and, in cases involving a licensee or sublicensee, be considered in the “principal place of business” of the licensee.
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Arvind Brands, a division of Arvind Ltd., became a USPA licensee in 2007 and two years later was spun off into a subsidiary of the parent called Arvind Lifestyle Brands Ltd.
In the years since, the case has traveled back and forth between New York and Bangalore, with considerations such as Ralph Lauren’s Indian subsidiary and the name change of the Arvind operation being presented by the parties.
The matter of geographical jurisdiction came up again on Friday — and the likelihood of more legal sparring increased — when Judge Richard Sullivan, also of New York’s Southern District, directed Ralph Lauren and USPA to take Ralph Lauren’s most recent trademark complaints, filed in February, to the American Arbitration Association and report back to the court on June 1 and every 60 days beyond that to update the court on the progress of those proceedings.
But Judge Sullivan also said that Ralph Lauren could pursue its charges that USPA had shown ample evidence to make its case alleging civil contempt by USPA for violations of a 2005 judgment and 2012 injunction prohibiting the use of marks previously found to have infringed on Polo’s logos.
The judge stayed the case pending the outcome of the arbitration proceedings and noted that some of the elements of the contempt allegations could be addressed by the arbitrators.
A spokesman for Ralph Lauren saw Sullivan’s decision as a step forward.
“The court noted that some of the challenged USPA marks appear to be the very same marks already prohibited by a prior court decision,” he said. “The case will proceed to resolution after consideration by both arbitrators and the court regarding Ralph Lauren’s claims for injunctive relief and monetary damages.
“Ralph Lauren continues to vigorously pursue claims against the USPA and it licensees around the world for violation of its intellectual property and contractual rights and will always defend its rights against infringement wherever it appears,” he concluded.
W. David Cummings, president and chief executive officer of USPA Properties Inc., commented, “Twice now in just seven months, two federal judges have rejected [Ralph Lauren’s] attempts to avoid its commitment to arbitrate disputes under the settlement agreement in which [Ralph Lauren] conceded the validity of USPA’s double horseman trademark over a decade ago. We are confident that the arbitration will uphold USPA’s right to use the double horseman mark on store signage, which we have been doing since 2007.”
He emphasized that the ruling by Judge Sullivan “upheld terms of the [2003] settlement agreement in which [Ralph Lauren] conceded the legitimacy of the USPA’s double horseman trademarks and agreed that any disputes concerning the use of those trademarks should be resolved in arbitration.”