- Polo in South Africa has survived a legal challenge to trademarks going back 46 years – but only barely.
- In a ruling this week, two judges of the Supreme Court of Appeal agreed with the high court that the brand's legal protection should be revoked.
- Partially because it is so very easy to confuse Polo in South Africa (with a pony facing right) and Ralph Lauren Polo (with a pony facing left).
- A majority of three judges overturned the trademark cancellation, saying it doesn't matter if South Africans think they are buying US fashion.
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Polo clothing in South Africa will continue to enjoy trademark protection going back as far as 46 years, after a near-thing victory in the Supreme Court of Appeal.
It should retain that legal protection even though South Africans may be buying the entirely different version of Polo sold in SA, said a majority of three justices of the court, while under the impression they are buying from America's Ralph Lauren fashion house.
The two brands use remarkably similar logos, distinguished primarily in that Ralph Lauren Polo features a pony facing to the left, while Polo in South Africa's pony faces to the right.
But a minority of two judges agreed with an earlier high court ruling that the confusion between the two brands is part of the reason the SA trademark should be revoked.
The owner of Polo South Africa, LA Brands, turned to the Supreme Court of Appeal to overturn that high court decision after a nasty fight it had started.
In May 2018, the LA group claimed its local Polo trademark was being infringed by the United States Polo Association, the governing body of the sport in that country, which sells clothing that offers "a piece of the sport of polo". Instead of knuckling under, the sporting association's South African representative, Stable Brands, launched a battle to cancel the South African Polo trademarks it was said to be violating.
That brought the relationship between the South African Polo and the Ralph Lauren version – and their relationship – into the spotlight.
Under an agreement in the 1980s, Ralph Lauren sells only cosmetic and perfume products with the Polo brand in South Africa, and has not challenged the local version of Polo's right to use the very similar logo on clothing.
But exactly how that came about is a "disquieting" mystery, said the SCA in the minority judgment, despite 2,064 pages of court records.
"What we do know is that because of the political climate in this country, as an American company, Ralph Lauren would have been under a number of financial, political and legislative constraints that precluded expansion into South Africa."
Regardless of how, exactly, the deal came about, "reasonable and sensible consumers" in South Africa have likely been deceived into thinking they are buying Ralph Lauren, rather than clothes not at all associated with that brand.
The two judges in the minority were not impressed by the breadth of the trademark claims by LA during the battle either, saying its "contention seems to boil down to is that it should be allowed a monopoly in relation to a concept, namely the sport of polo."
But a majority of three judges said the high court had made several mistakes in ordering the cancellation of 46 trademarks, the earliest registered in 1976, including when it considered the word "polo" in its dictionary sense. That word may refer to a sport, or a polo shirt, said the majority, but the way Polo South Africa has used it has made it distinctive enough to be a valid trademark.
The fact that Polo in South Africa may mimic Ralph Lauren stores in the USA, and follow its brand approach, is irrelevant, the majority said, because trademarks are territorial.
As for people who think they are buying Ralph Lauren clothing, that is not significant because those consumers will always be buying the South African version, with no risk of getting Ralph Lauren Polo instead, said the court.
"It matters not that they think that they are buying from a well-known US fashion house. The badge of origin function of a trade mark is fulfilled provided that all items bearing that badge come from the same source."
(Compiled by Phillip de Wet)