The SA distributors of Polo was last Friday denied the right to appeal the ruling by Judge C.J. van der Westhuizen 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).

Polo SA, part of the LA Group,  is now petitioning the Supreme Court of Appeal in Bloemfontein and is threatening to approach the Constitutional Court to try and keep their Polo-trademarked garments on local retailers’ shelves.

The company registered its Polo trademarks about 40 years ago when most international brands, including Ralph Lauren, were not active in South Africa. They subsequently prevented other brands, including Ralph Lauren, from using the Polo logo and name on garments and accessories in South Africa. When they tried to prevent the U.S. Polo Assn. (USPA), which represents polo sport in the US, from using its trademark locally, the South African distributor, Stable Brands, counter-sued.

At the end of last year Judge Van der Westhuizen found that most of the LA Group’s trademark registrations are invalid and must be expunged. His main argument was 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 also expressed concern about “the manner in which the LA Group had used some of its Polo trademarks 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.”

According to Polo SA their brand “has a strong heritage and has been around for over 40 years”. They also argue that property rights are guaranteed by the Constitution.

“We must emphasise that this judgement undermines trademark and property rights in South Africa and has dire legal and commercial consequences for intellectual property, the economy and foreign investment in South Africa,” MD Mark Oliver wrote to retail clients on a letterhead featuring one of the disputed logos.

And they warn: “We again make it absolutely clear that we will continue to vigorously pursue anyone who infringes our trademarks.”

Their trademarks cannot be expunged while they are still pursuing legal avenues and retailers may therefore still keep garments with the disputed Polo logos on their shelves.