A horse by the same name? Legal Brief By Janine Hollesen, Director March 2020 The High Court in Pretoria has recently ordered the The reality is that these two brands belong to different cancellation of numerous trade mark registrations entities, one of which is Ralph Lauren and the other for POLO and logos which include a polo player a South African company, LA Group (Pty) Limited and pony on the basis that the marks are not distincitve (“LA Group”). and do not function as a badge of origin. The judgment opens with the following which sets the scene: The marks of these separate companies are copied below from which it can be seen that for the LA Group mark, the pony faces to the right and for the Ralph Lauren mark, the pony faces the other way. “What is in a name? A rose by any name remains a rose. Oft’ quoted oft’ used, albeit in a dismissive tone. A trade mark. A Badge. Origin. Three different concepts. Used together, there is only one concept, namely, a trade mark is a badge of origin” LA GROUP MARK RALPH LAUREN MARK For many years, there has been two POLO brands for sale According to the judgment, LA Group and Ralph Lauren on the South African market, which are mostly used for entered into an agreement in terms of which Ralph clothing and fashion accessories. Lauren could register its POLO and POLO PLAYER LOGO in South Africa and that both parties could use The court also took into account the fact that the word their marks alongside each other in the same industry. “polo” is used to describe various items including Levi’s The goods of both parties are sometimes even Polo Dress, Nike Polo Shirt and a Puma Stripe Polo Jersey in the same outlets and online retailers. and concluded that the fashion industry considers the use of the word “polo” not to indicate the origin Now a third party has entered the picture which of the clothing, being the purpose of a trade mark. is the US Polo Association (USPA), which has been selling its products in South Africa, via its South African The Court ordered the cancellation of numerous trade distributor, Stable Brands, for a year or two. The USPA’s mark registrations for POLO, the POLO PONY & Player logo is copied below: and DOUBLE POLO & PLAYER logo. As these marks were filed in various classes, this has meant that the court order extends to many registrations in the name of LA Group. This matter is reminiscent of the case in which we acted for Ackermans against Truworths in relation to the term “THE LOOK” which was registered for clothing. In that case Truworths issued infringement proceedings against Ackermans for its use of THE LOOK in the phrase THE LOOK FOR LESS. We also filed a counter-claim on behalf of Ackermans for the cancellation of THE LOOK trade mark registration based on similar considerations as set out in this case, which was upheld in the Supreme Court of Appeal which resulted in the cancellation of THE LOOK trade mark registration in the name of Truworths. This case involved neither Ralph Lauren nor the USPA, but was between LA Group and Stable Brands. It is therefore important to make sure that when choosing a mark that it is distinctive and can function as a trade The cancellation case started when LA Group filed mark to ensure effective protection when it comes infringement proceedings against Stable Brands, to enforcement thereof. who then filed a counter-claim for the cancellation of LA Group’s extensive portfolio of marks which included For now, the POLO case has been appealed and we will POLO (as a word mark) and logo marks which included report again when there are any further developments. POLO in various class. The common feature of LA Group’s POLO trade marks was either the word POLO or a logo depicting a polo player on a horse, or the combination of the two. One of the attacks on the POLO marks was that the word mark POLO and / or the POLO PONY & PLAYER logos cannot distinguish the products of LA Group from those of others in the market. According to the court, the word “polo” is descriptive and non-distinctive for clothing and sports, stating Legal notice: Nothing in this publication should be construed as legal advice that the ordinary meaning and dictionary meaning from any lawyer or this firm. Readers are advised to consult professional legal advisers thereof is that of the sport polo and it is also used for guidance on legislation which may affect their businesses. to indicate specific pieces of clothing, such as a polo shirt and a polo coat. © 2020 Werksmans Incorporated trading as Werksmans Attorneys. All rights reserved. Director Janine Hollesen Stellenbosch Head of Intellectual Property Practice T +27 21 809 6011 F +27 11 535 8528 E [email protected] Click here for her profile Established in the early 1900s, Werksmans Werksmans’ more than 200 lawyers are About us Attorneys is a leading South African a powerful team of independent-minded corporate and commercial law firm, serving individuals who share a common service multinationals, listed companies, financial ethos. The firm’s success is built on a solid institutions, entrepreneurs and government. foundation of insightful and innovative deal structuring and legal advice, a keen ability Operating in Gauteng and the Western Cape, to understand business and economic the firm is connected to an extensive African imperatives and a strong focus on achieving legal alliance through LEX Africa. the best legal outcome for clients. 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