The legal battle between the LA Group and Stable Brands over the rights to use the Polo and Polo Pony trademarks is becoming interestinger and interestinger. Despite three court decisions going against them – costing them the legal fees of Stable Brands as well as their own – the LA Group doggedly remains on the offensive and now threatens to take their case against the loss of their Polo trademarks right up to the Constitutional Court (sounds familiar?).
Both companies have issued statements explaining the situation, which can be very confusing for retailers, caught in the middle. Therefore, to recap the ebb and flow of the legal battle so far:
- It started last year when the LA Group applied for an urgent interdict to prevent Stable Brands from selling the trademarked U.S. Polo Assn. (USPA) garments in South Africa. To clarify: just like SA Rugby, Cricket South Africa, FIFA, the NBA and numerous other sport federations, USPA gave licenses for fashion/lifestyle garments to be manufactured bearing their logo, which is two polo players in action on ponies using mallets. These garments are sold in about 180 countries and Stable Brands was appointed their exclusive licensee for South Africa in 2018.
The LA Group, however, claimed that the logo of the sport’s governing body – founded in 1890 in the US – was a copy of the South African polo player and pony trademarks, which is often confused with the international Polo by Ralph Lauren logo. [See article here].
The South African Polo shirt brand was founded in 1976 by Graham Joffe and some of his former Monatic colleagues who registered trademarks that confined the use of the Polo by Ralph Lauren trademark to linens and cosmetics in South Africa. In 1998 the LA Group bought the “Polo and pony” trademarks from them.
LA Group withdrew their urgent court application against USPA and had to pay costs.
Score: 1-0 in favour of Stable Brands who could continue promoting and selling their USPA garments.
- Instead, the LA Group asked the courts that the USPA trademarks first registered in South Africa in 2007 should be cancelled and expunged from the trademarks register – which backfired when Stable Brands launched a counter-application to have the LA Group’s Polo trademarks cancelled and expunged from the register.
The November 29th 2019 Pretoria High Court judgement went against the LA Group and the judge ruled that more than 40 of their local Polo trademarks must be expunged from the register and that the word Polo cannot be trademarked. He also had a few choice words about the confusion caused by the similarity to the international Polo Ralph Lauren trademark [read here].
Again the LA Group was ordered to pay costs.
Score: 2-0 in favour of Stable whose trademarks remained on the register and an expensive loss for the LA Group who lost registration of their trademarks and therefore became vulnerable to a challenge from a rival brand to cease selling garments bearing any of their now cancelled trademarks.
- The LA Group then applied for leave to appeal this verdict that expunged 40 plus of their trademarks, meaning that the judgement was suspended until the appeal was heard between 17 to 21 February 2020. Their petition to appeal was denied by the Pretoria High Court on February 21 this year. Again with costs.
Score: 3-0 in favour of Stable, with the LA Group remaining vulnerable to legal action for using the cancelled trademarks and again taking an expensive hit.
“The dismissal of the LA Group’s application for leave to appeal reinforces the strength of the original judgement and order and aids the continued growth of the U.S. Polo Assn. (USPA) brand in the region,” said J. Michael Prince, president and CEO of USPA Gobal Licensing, after the decision.
“We look forward to bringing new and exciting designs to the marketplace and to educating the South African people about the authentic connection between the USPA brand and the exciting sport of polo.”
They reiterate in a press statement that USPA “has an absolute right to use those trademarks in commerce, despite the strenuous efforts and attempts of LA Group to claim otherwise and block USPA’s famous brand from being offered to the South African market.”
The “strenuous efforts” they refer to no doubt include reference to two letters the LA Group sent to customers.
Shortly after their appeal was denied in the High Court on February 19th they wrote to customers (above), explaining that they are petitioning the Appeal Court, and failing that, the Constitutional Court, for leave to appeal the cancellation of their trademarks. This means that until these appeals processes had been exhausted, their trademarks remain on the register and no other brand may request the removal of garments bearing these marks from stores.
The LA Group, however, does not lack confidence that the court will eventually rule in their favour and remains on the offensive to deter any competition – from registered trademarks, or not.
For example, a week before their appeal to prevent the removal of their trademarks was denied, the sheriff delivered a lawyer’s letter (below) to a store stocking the USPA garments. The Adams & Adams lawyer threatened that her client (LA Group) intended to institute proceedings against them “as soon as the USPA trademark registrations are removed from the Register and their client’s registrations are restored”.
To be fair, in the same letter the lawyer acknowledges that the judge had ruled that more than 40 of the LA Group’s trademarks should be expunged from the trademark register.
But, she makes reference to a court case to be heard between 17 and 20 February 2020 challenging the legality of the USPA trademarks and the counter-application against her client’s Polo trademarks … but failed to point out that the case in question was to hear the LA Groups’ petition to appeal the 29th November judgement that cancelled their trademarks. Which they lost (as explained above).
It is, however, clear from their stated plans to appeal right up to the Constitutional Court that the LA Group intends to fight until the bitter end.