LA Group – owner of South Africa's POLO clothing brand – has been dealt a blow by the High Court in a long-running legal battle between retailers.
According to the judgment, over 40 registered trademarks in the group's name must be cancelled and expunged from the trademark register. LA Group will no longer hold these trademarks on the grounds that the word "polo" is "non-distinctive in the trademark sense", according to the High Court in Pretoria.
LA Group had also used some of its trademarks in SA in a manner that there was a likelihood of deception or confusion in the SA marketplace between its brand and that of international designer Ralph Lauren, the judgment added.
For the SA POLO clothing brand, it means losing an advantage it has held in the local market since the 1970s. It could also potentially pave the way for Ralph Lauren – which has been prevented from selling its POLO clothing brand here – to enter the SA market, according to trademark experts.
The battle was not, in fact, between LA Group and Ralph Lauren. But before we get to that, back up a little.
I'm not wearing Ralph Lauren?
That's correct: The POLO clothing brand familiar to South Africans in local retail stores is not associated with Ralph Lauren, though there is a usage agreement between the two companies. The exact terms of the agreement are not known, but the agreement - as well as the fact that LA Group held trademark rights - has meant Ralph Lauren could sell its POLO perfume here, but not the clothing range.
Meanwhile, the LA Group POLO brand has periodically featured in local news media for its similarity to the POLO brand created by Ralph Lauren.
Lovers of designer brands, it appeared from what was publicly reported, took issue with what they described as both a high price tag and a misunderstanding. (A local POLO men's shirt retails at around R1000, while a pair of swim shorts goes for approximately R700. Children's golf shirts start at around R400.)
A quick Google search yields various queries, tips and tricks from South Africans in the market for Ralph Lauren POLO goods.
But for others, POLO South Africa has been a welcome addition to their wardrobes, with the brand building a solid local customer base over a period of decades. And LA Group has consistently defended its position, citing the usage agreement when faced with criticism.
POLO South Africa told Fin24 it had noted the judgment with "grave concern", saying it was surprised at the decision.
"The Constitution protects property rights, including intellectual property," it said. "Our POLO trademarks have been used in South Africa and sub-Saharan Africa for over 40 years. The reputation and goodwill of the POLO brand is well established." Protecting intellectual property was crucial to growing the economy, it argued.
It added that the brand was "iconic" and "valuable".
Spot the difference
Both the Ralph Lauren and POLO SA logos feature the word POLO in capitals, and a figure on a pony with a mallet. (See below)
According to the agreement between LA Group and Ralph Lauren, the polo player and pony in the SA version faces to the right, while the Ralph Lauren version faces to the left. This, according to LA Group, is in order to differentiate the brands.
But this is where the story gets complicated.
As mentioned, the applicant was not Ralph Lauren: the applicant was Stable Brands, which is the exclusive licensee in SA of the US Polo Association (USPA), selling apparel and other merchandise to the SA market since 2018. Founded in 1890, USPA is the governing body of polo in the United States and promotes the actual sport played on the back of a pony with a mallet.
The respondents were LA Group and the Registrar of Trade Marks.
The USPA says it has a global footprint of $1.7bn dollars and distribution through 1 100 retail stores, department stores, independent retailers and e-commerce. It offers apparel for men, women and children, as well as accessories, footwear, travel and home goods in 180 countries.
Given its occupation, it wanted to use the word "polo".
USPA's logo, if you're still keeping up, features two ponies with riders and mallets, and four capital letters, albeit not P-O-L-O. The USPA is also one of the world's oldest sports governing bodies.
LA Group had initiated an application in May 2018 for alleged infringement of its trademarks. But Stable Brands didn't appreciate trademark limitations it felt were relevant to its gear, and it counter-applied for the expungement of a number of LA Group's registered trademarks. It emerged with a victory in November 2019.
And that victory – unless LA Group is granted leave to appeal and if it does so successfully – has implications not only for its own distribution channels, but many others.
'Only itself to blame'
The High Court, for its part, said the word 'polo' could not be used exclusively in the trademark sense. It was a "generic term", it said.
"[T]he fashion industry considers the use of the word polo not to describe origin, the true purpose of a trademark, and hence not exclusivity of one trader’s goods over that of another," it 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."
As for Ralph Lauren, despite the fact that it was not an applicant, its tangential role in the story is crystallised where the judgment makes mention of the usage agreement between the two companies and the similarity of the logos.
According to the judgment, LA Group "mimicked" the sales approach of Ralph Lauren, often had goods distributed through the same outlets, and had similar clothing ranges and brands, for example, a pink pony campaign in support of breast cancer awareness. "The fact of deception or confusion is a reality," it said – further arguing that in these circumstances, a case could not be made for the sanctity of the trademark.
"A trademark proprietor," it said, "has only itself to blame if its trademark becomes vulnerable to expungement due to the manner in which itself has used its marks."
Attorneys for USPA, Spoor & Fisher, welcomed the ruling, saying it would be favourable to other retailers using the word "polo". Calling the USPA brand "iconic", they said the association had registered trademarks dating back to 2007 in South Africa, and should be able to use them.
LA Group told Fin24 it had applied for leave to appeal, which meant that for now, it was "business as usual".
Approached by Fin24, Ralph Lauren's international media department did not respond.