Member Article

“To lose one trade mark may be regarded as a misfortune, to lose a whole portfolio looks like carelessness.” – Something Oscar Wilde might have said were he still alive and closely monitoring trade mark law developments in South Africa.

A recent South African trade mark judgment, Stable Brands (Pty) Ltd v LA Group (Pty) Ltd and The Registrar of Trade Marks, highlights an interesting thing: while for many people the clothing brand Polo means Ralph Lauren, in South Africa things are a little different. That’s because here the Polo brand has long been shared by Ralph Lauren and a South African company called LA Group. An unusual arrangement that is further complicated by the fact that the US Polo Association also has a strong interest in the name Polo.

Stable Brands, the South African licensee of the US Polo Association, applied to cancel more than 40 South African trade mark registrations belonging to LA Group – it did this in response to an infringement threat. Stable Brands succeeded in its action, with registrations being cancelled on various grounds, including:

• lack of distinctiveness;
• non-use for five years or longer;
• registration without a genuine intention to use, coupled with non-use; and
• likelihood of confusion or deception arising from the manner in which the registrations had been used.
  
  

The trade mark registrations that were attacked were generally for the word Polo and/or a device of a polo player on a horse. The registrations covered a range of classes: 6, 9, 14, 16, 18, 20, 24, 25, 26, 27, 28, 35, 41, 42 and 43. These classes cover a diverse range of goods and services including clothing, sporting apparatus, keyrings, spectacles, leather goods, electronic goods, jewellery, and entertainment services.

In a judgment that is relatively short and broad-brush in nature, Judge Van der Westhuizen made the following findings:

Cancellation based on lack of distinctiveness

The word“polo” is incapable of performing a trade mark function: “The word ‘polo’ is first and foremost a word of description. Its ordinary grammatical meaning clearly proves that. Thus one trader can therefore not usurp the word ‘polo’ for its own exclusive use, where the mark is generic and thus it cannot operate as a badge of origin in those circumstances.”

Moreover, “the fashion industry considers the use of the word ‘polo’ not to describe origin, the true purpose of a trade mark, and hence not exclusivity of one trader’s goods over that of another.”

Cancellation based on non-use for five years or longer

In cases of this nature, “the proprietor is expected to have comprehensive and peculiar knowledge of the fact ofbona fideuse, if it has occurred, to advance clear and compelling evidence to that effect.”

LA Group’s evidence, however, comprised undated photos, or photos outside of the critical period, as well as photos from a catalogue, without context or explanation.It was therefore inadequate, being “sparse, ambiguous or lacking in conviction.”

Cancellation based on the claim that trade marks had been registered without a genuine intention to use, coupled with non-use

LA Group’s business “focussed on clothing, footwear, headgear, eyewear, bags, luggage, wallets, purses and bed linen.” It followed therefore that the company “could never have had any intention of using its trade marks on goods such as typewriters, scientific apparatus and instruments, software, medical hygienic and health care services, non-electric cables and the like.”

Cancellation based on a likelihood of confusion or deception arising from the manner in which the registrations had been used

This attack was “premised wholly upon the admitted fact the first respondent had entered into an agreement with another competing trader Ralph Lauren LLP, in terms of which the latter was allowed to register its Polo and Polo Pony & Player Device marks in South Africa ...the agreement further entailed that the two traders could use their respective Polo, Polo Pony & Player Device, Polo Jeans Co and Polo Sport marks alongside each other in the same industry in South Africa.”

This agreement “clearly acknowledges that there could be no exclusivity in the word Polo used with or without a polo pony device.”

The end result

A considerable portfolio of trade mark registrations removed in one fell swoop! Something that LA Group was itself responsible for: “A trade mark proprietor has only itself to blame if its registered trade marks become vulnerable to expungement due to the manner in which it itself has used its marks.”

The purpose of trade marks

Even before getting into the cancellation issues, the judge said some things about trade marks in general:

“Distinguishability of the trade mark lies in the telling of a story. The story of the trade mark proprietor’s goods or services, either of good fortune or a hapless one. Distinguishability initially of the goods or services. In post-modern times, the exclusivity may have taken a back seat to the popularity of a brand by consumers due to peer pressure, or to mass hysteria in the good sense, or simply due to unity of masses and the fear of being left out ...It is common cause that the goods are oft manufactured by the same manufacturing houses that cater for all and sundry, the brand being the only difference applied... the badge of origin (still) serves its true purpose and function.”

There you have it – the connection between trade marks and FOMO!

Reviewed by Gaelyn Scott, head of ENSafrica’s IP department.

Liézal Mostert Senior Associate IP [email protected] +27 65 164 7274