You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

February 25, 2014

Supreme Court Orders Registration of “Polo” Mark Despite Existence of Earlier “Polo” Marks

Subscribe to Updates
World Trademark Review

In Young Sangyo Co Ltd v Department of Intellectual Property (November 25, 2013), the Supreme Court has overturned a decision of the Intellectual Property and International Trade Court (IP&IT Court) in which the latter had found the figurative trademark BEVERLY HILLS POLO CLUB was confusingly similar to the earlier figurative trademark SANTA BARBARA POLO & RACQUET CLUB.

Plaintiff Young Sangyo Co Ltd filed an application for the registration of the trademark BEVERLY HILLS POLO CLUB (and polo player device) with the Department of Intellectual Property of Thailand for goods in several classes, including Classes 9 and 28 of the Nice Classification (Application Nos 595158 and 595162).

The registrar rejected the application under Section 13 of the Trademark Act on the ground that the trademark was identical or similar to the registered trademarks of others, namely:

  • The trademark RLX POLO SPORT (and device) (Registration No TM102221) for goods in Class 9:
  • The trademark POLO (and device) (Registration No TM184935) for goods in Class 18:
  • The trademark SANTA BARBARA POLO & RACQUET CLUB (and device) (Registration No TM193574) for goods in Class 9:
  • The trademark POLO WORLD (and device) (Registration No TM174819) for goods in Class 9:

The plaintiff appealed to the Board of Trademarks. The board confirmed the registrar’s order, finding that the plaintiff’s trademark was identical or similar to the registered trademarks of others to the extent that it might cause public confusion as to the proprietorship or origin of the goods.

The plaintiff argued that the registrar’s order and the Board of Trademarks’ decision were unlawful, as its trademark was not identical or similar to the registered trademarks of others to the extent that it could cause confusion among the public. The plaintiff filed a civil suit with the IP&IT Court, requesting that the court withdraw the registrar’s order and the board’s decision and order the Department of Intellectual Property to proceed with registration of the mark.

The IP&IT Court dismissed the case, considering that the mark applied for was confusingly similar to the registered trademark SANTA BARBARA POLO & RACQUET CLUB of the Santa Barbara Polo & Racquet Club. The plaintiff appealed to the Supreme Court.

On November 25, 2013, the Supreme Court pronounced its judgment. The court stated that, due to its appearance and pronunciation, the plaintiff’s trademark BEVERLY HILLS POLO CLUB was clearly different from the registered trademark SANTA BARBARA POLO & RACQUET CLUB, as well as the other cited trademarks. The court also considered that, although the marks both included the word “polo,” this did not preclude the plaintiff from using that word as part of its trademark, given that its overall appearance and pronunciation was not confusingly similar. In addition, as the plaintiff had disclaimed the words “Beverly Hills” and “club,” it had no exclusive rights over those words. Finally, the plaintiff had successfully proven that it had used and advertised the mark in numerous countries without any confusion since 2001.

The Supreme Court thus overturned the IP&IT Court’s judgment and dismissed the Board of Trademarks’ decision. It ordered the Department of Intellectual Property to proceed with registration of the plaintiff’s trademark in Class 9 and Class 28.

Download Full Article
Related Professionals

Practices

Dispute Resolution and Litigation

Intellectual Property

Location

RELATED INSIGHTS​ 

August 20, 2026
Vietnam’s Law on Bankruptcy and Rehabilitation No. 142/2025/QH15, passed by the National Assembly on December 11, 2025, does something many regional counterparts do not yet attempt: it instructs parties and arbitral tribunals on exactly what happens to an arbitration once a debtor becomes insolvent. Together with the Law on Commercial Arbitration No. 54/2010/QH12, the new law improves upon what used to be an uncertain area of practice, now providing an explicit, mandatory sequence of procedures. Suspension and Termination of Arbitration Proceedings Under article 40(2) of the law, once a Vietnamese court accepts a bankruptcy petition, any arbitration that concerns the debtor’s financial obligations must be temporarily suspended as soon as the tribunal receives the court’s notification. If the court subsequently issues a decision commencing bankruptcy proceedings, article 59(2) takes a further step: the suspended arbitration is terminated outright, and the underlying case file is transferred to the court handling the insolvency for resolution. The two provisions work as a sequence: first suspension, then termination and transfer, rather than as independent triggers. Meanwhile, article 60(4) reinforces this effect by vesting the bankruptcy court with exclusive jurisdiction over all claims against the debtor from the date the petition is accepted. Notably, this mechanism operates automatically, without the need for the insolvency court to issue a separate anti-arbitration order. The tribunal simply suspends or terminates the proceeding by operation of law once notified; however, Vietnamese law currently provides no procedure by which a party can apply to the insolvency court for permission to continue the arbitration despite the statutory effect. Practitioners with a Vietnamese counterparty in arbitration should treat notification of a bankruptcy filing as something to flag to the tribunal immediately since continuing to arbitrate a claim that has become subject to article 40(2) or 59(2) risks producing an award vulnerable
Read More
August 20, 2026
Thai law contains no provision that speaks directly to what happens to an arbitration when one of the parties becomes insolvent. The interaction between arbitration and insolvency is derived instead from the general operation of two separately drafted laws: the Bankruptcy Act B.E. 2483 (1940) and the Arbitration Act B.E. 2545 (2002). Because Thai courts have had few opportunities to interpret how these two statutes apply together, the practical answer to many questions, such as who represents an insolvent party in arbitration, whether an award will be enforced, and what happens to a foreign proceeding, depends on inference from general principles of insolvency, arbitration, and procedural law rather than on settled rules. Liquidation and Restructuring The Bankruptcy Act governs both liquidation, which winds up a debtor’s affairs, and restructuring (rehabilitation), which aims to preserve a business. The consequences for arbitration differ accordingly. In liquidation, the debtor’s assets vest in the official receiver, who alone can conduct or continue any arbitration affecting the estate; the debtor loses the authority to act on its own behalf. In restructuring, the plan preparer or administrator takes over that role, but there is more room for the debtor to remain involved, since the objective of rehabilitation is to keep the business operational. Restructuring carries an automatic stay that takes effect once the Bankruptcy Court accepts the restructuring petition. This stay can halt an arbitration regardless of where it is seated. In contrast, liquidation does not work through a stay; instead, the debtor’s loss of authority over its own assets and disputes is what constrains the arbitration. Neither proceeding provides a party a formal route to apply for permission to continue arbitrating—the Bankruptcy Act contains no such mechanism—though in restructuring cases the Bankruptcy Court may allow proceedings to continue where doing so will not prejudice
Read More
August 20, 2026
As part of its membership in Lex Mundi, Tilleke & Gibbins has released the latest edition of its Guide to Doing Business in Thailand, providing an overview of the legal, regulatory, and commercial considerations for companies establishing or expanding operations in Thailand. The 2026 edition offers practical insight into the country’s business environment, investment framework, and operational requirements. The guide covers a wide range of topics relevant to foreign and domestic investors, including: Investment incentives and promotion schemes Financial facilities and banking regulations Exchange controls and money transfers Import and export regulations Business structures and incorporation options Requirements for establishing a business Operational and compliance considerations Business cessation and insolvency procedures Employment and labor laws Taxation Immigration and visa requirements Prepared by Tilleke & Gibbins lawyers across multiple practice areas, the publication outlines key aspects of doing business in Thailand, including foreign investment restrictions, regulatory compliance obligations, corporate structures, employment requirements, and recent legal and economic developments affecting investors. The publication forms part of Lex Mundi’s Country Guides series, a global collection of jurisdiction-specific reference materials prepared by member firms around the world. Together, these guides help companies evaluate opportunities, compare regulatory environments, and plan international business activities across multiple markets. The full Guide to Doing Business in Thailand 2026 is available through the button below.
Read More
August 19, 2026
Arbitration clauses and national court jurisdiction have long existed in a delicate equilibrium, and nowhere is that equilibrium tested more often than in the drafting of multitier dispute resolution clauses. Such clauses—requiring negotiation before arbitration—are ubiquitous in international construction contracts, and they frequently employ permissive vocabulary at the arbitration tier. The formulation “either party may submit the dispute to arbitration” is intended to signal that either side is entitled to initiate proceedings. Yet it is periodically seized upon by claimants who prefer national courts, on the theory that “may” preserves a parallel right to litigate. Each apex-court pronouncement on this question is therefore significant for drafting practice and forum predictability. In 2019, the Thai Supreme Court delivered Thailand’s clearest answer to date (Judgment No. 3427/2562). Reversing an appellate court decision, the Supreme Court held that permissive wording at the point of commencement does not dilute the parties’ antecedent agreement to withdraw their disputes from the courts—doing so in regard to an International Chamber of Commerce (ICC) arbitration clause seated in Singapore, a configuration typical of foreign-invested projects in Thailand. This article examines the court’s reasoning, situates the decision within comparative jurisprudence, and draws out its practical lessons for parties and drafters operating in the Thai market. Background of the Dispute The dispute arose from a subcontract for civil engineering and architectural works concluded on September 25, 2014. Clause 19 of the subcontract governed dispute resolution. Clause 19.1 required the parties, at the request of either, to seek to resolve any dispute “in connection with, arising out of, or relating to” the subcontract through mutual consultation within sixty days of written notice. According to clause 19.2.1, if the dispute could not be resolved within that period, “either party may submit the dispute to arbitration,” to be conducted under the ICC
Read More