In 2018, the appellant, LA Group, launched an application for relief for trade mark infringement against Stable Brands in respect of their use, under licence, of certain trade marks of the US Polo Association. The respondent, Stable Brands, instituted a counter application for cancellation of 46 trade mark registrations relied on for relief by the appellant. When the appellant withdrew the main application, the respondent persisted with its counter application on the basis that the appellant’s trade mark registrations were entries wrongly made or wrongly remaining on the register. The respondent succeeded, with the registrations being cancelled on various grounds.
The case was taken on appeal to the SCA. The judgment is long and this summary is limited to the majority judgment.
Insofar as removal under section 10(2)(a) was concerned, the respondent sought cancellation on the ground that the mark POLO was descriptive and not inherently capable of distinguishing, as the word ‘polo’ was not distinctive of the appellant’s goods. The court found that the marks in question “have earned and still enjoy an immense goodwill and reputation” and that the “POLO trade marks have become firmly established in South Africa, having been operating in the marketplace as indicators of origin for more than 40 years”. “The general public…would identify goods bearing the POLO trade marks as originating from the appellant”. The marks were held to have become distinctive through use and not liable to be removed. Because the marks were held to have become capable of distinguishing, the marks challenged under section 10(2)(b) and (c) were not liable to be removed.
In terms of section 27(1)(b), a trade mark may be removed if there has been no bona fide use for a continuous period of 5 years up to 3 months before the date of application for removal. While most of the registrations were to remain on the register, the court held that certain trade marks had been correctly cancelled. The SCA was not satisfied with the proof of use relied upon by the appellant, which was a ‘diagram of associated registrations’ in support of its argument that all of its trade marks combined to form a “unitary brand” and “each individual trade mark registration was protected as part of this brand”. This approach was held to be impermissible.
In terms of section 10(13), “a mark which, as a result of the manner in which it has been used, would be likely to deceive or cause confusion” is liable to be removed. The majority judgment of the SCA held that it is not about the “confusion … likely to result from the use of a confusingly similar trade mark by two different entities”, being the appellant’s alleged failure to distinguish its goods from those of Ralph Lauren. It is use of the mark itself that must be likely to cause deception or confusion.
Save for upholding the removal of certain marks from the register in terms of sections 27, the counter-applications for removal were dismissed as well as the applications in terms of sections 24 read with 10(2) and section 10(13).