For fashion conscious consumers across the world POLO garments are made by Ralph Lauren and the trade mark horse, registered in 1967, faces inwards. For polo players, the two horse trade mark signifies the sport governed by the US Polo Association since 1890, which also features on the fashion range sold in 180 countries – including South Africa. For South African fashion retailers that stock POLO garments the brand belongs to the LA Group, considered to be the owners of the local trade mark name registered in 1976.
But no more.
Towards the end of last year Judge C.J. van der Westhuizen of the Gauteng North High Court ruled that more than 40 of the Apartheid-era POLO trade mark registrations by the LA Group are invalid and must be expunged (read his full judgement here) – and ordered the Registrar of Trade Marks to rectify the Trade Mark register to comply with the order (see some examples featured at the top).
Ironically, this is a result of an attempt by the LA Group to prevent the use of the US Polo Association (locally known as USPA) trade mark (above) on garments sold in South Africa. It backfired.
The local USPA distributor Stable Brands counter-sued, arguing that the POLO trade mark registered by the LA Group was illegal and should be expunged. USPA won, with costs.
And now retailers are left carrying stock which may prove to be illegal … or not, should the LA Group’s appeal succeed.
“We have applied for leave to appeal, which has suspended the operation of the order of Court. This means business as usual,” POLO South Africa wrote in a letter to customers, with the disputed logo as letterhead. “We are confident that we will vindicate our trade mark rights,” they continued.
This confidence may indeed be justified, as the group was partly successful in a court case against retailer AJ Meltz in 2005 when they had garments with the trade marks POLO Ralph Lauren and US Polo Association since 1890 seized as counterfeit goods.
Yes, indeed, the judge ruled that these international trade marks infringed on the registered local trade mark! What’s more, 14 years ago the judge dismissed Meltz’ counter-argument that the local POLO trade mark should be expunged because it causes customer confusion with the well-known international marks – the judge decided POLO by Ralph Lauren was not sufficiently well-known in South Africa.
When the LA Group began registering its POLO trade mark and pony logo in the 1970’s it was at the height of South Africa’s isolation years when most international brands shunned us in protest against Apartheid. Many South African companies seized the opportunity to register well-known international brand names that were not available here.
Famously, the registration of the McDONALD’s, Big Mac, and large yellow M trade marks by the local owners of the Chicken Licken franchise in the early 1990’s became a Harvard Law case study … especially as the locals also succeeded in having the US McDonald’s right to these trade marks in South Africa expunged.
But, when the Trade Marks Act No. 194 of 1993 came into force in 1995, Section 35 protected well-known trade marks emanating from certain foreign countries and McDonald’s won the appeal with costs. In this case, market research supported McDonald’s claim that it is indeed well-known – whereas Meltz and POLO Ralph Lauren failed in 2005.
Now, Judge Van der Westhuizen, took a completely different view. His main argument is that the name polo is a commonly used descriptive term for a sport or a type of garment – and such a generic term cannot be trademarked. He said:
“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” and “the word polo is considered a generic term and indicative of at least a certain category of clothing, it would follow that the word has become customary in the current language to describe such clothing”.
What’s more, the judge expressed concern for “the manner in which the LA Group had used some of its POLO trade marks in South Africa” which he said “created a likelihood of deception or confusion in the marketplace between LA Group’s brand and that of Ralph Lauren.”
The LA Group does not agree with Judge Van der Westhuizen’s reasoning. In the customer letter they expressed their surprise with the decision because the “Constitution protects property rights, including intellectual property, which the Court overlooked.” And added that a “judgement that undermines intellectual property rights will not serve South Africa.”
They further maintain that because their POLO trade mark has been used in South Africa and Sub-Saharan Africa for over 40 years “the reputation and goodwill of the POLO brand is well established. Our customers know and trust our brand. Our trade mark registrations give protection to an iconic and valuable brand.”
One can but wonder if they are aware of the angry, shocked, indignant and vitriolic online comments from customers when they become aware that the local POLO garments are NOT from Ralph Lauren as they erroneously believed. The words fake and cheated feature strongly in numerous online forums.
Over the past 25 years South Africans have travelled widely and have become accustomed to the top international brands being available locally, or sold online, and the younger generation is very aware of POLO Ralph Lauren, which they expect to see in South Africa. It is therefore easy for customers to confuse the polo player and pony logos of the brands – especially if the styles and colours of the local and international garments and some marketing campaigns are so similar. At first glance.
Hint: the local POLO horse faces outwards, the international POLO Ralph Lauren horse faces inwards and the USPA logo consists of two polo players on horses. According to an agreement with the LA Group POLO Ralph Lauren may only be sold as cosmetics in South Africa.
“U.S. Polo Assn. is the only authentic and official brand of the United States Polo Association,” said J. Michael Prince, president and CEO of USPA Global Licensing Inc, in a statement. “This brand represents the sport of polo while supporting and sponsoring numerous programs to benefit the people of Africa and bring awareness to this historic sport.”
The USPA clothing range is worth $1.7-bn worldwide and is distributed through 1 100 retailers across 180 countries.
USPA first registered its trade marks in South Africa in 2007 and has been selling garments in the local market for many years. Since 2018 it has expanded its fashion range locally through local distributor Stable Brands. It has an absolute right to use those trade marks in commerce, the USPA statement continues, “despite the strenuous efforts and attempts of LA Group to claim otherwise and to block USPA’s famous brand from being offered to the South African market.”