Brand Owners for POLO (South Africa) File Action in Kenya Seeking to Reverse Registrar of Trade Mark

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Wardrobe Collections Clothing Store (Wardrobe Collections) had applied to register its CLASSIC POLO device as a trade mark in class 25 with the Kenya Industrial Property Institute in August 2014. The mark was then subject to an opposition from L.A. Group, whose Mounted Polo Players and Horse device was registered 2013 also in class 25.

The Registrar of Trade Marks, while admitting that L.A. Group’s device and Wardrobe Collections’ device are conceptually similar, ruled that their resemblance was not enough to create confusion among consumers. L.A. Group has now moved to the High Court to appeal the decision of the Registrar.

The basis of L.A. Group’s application is that they believe that the Registrar erred by affording insufficient weight to the fact that L.A. Group has a registered trade mark with the Mounted Polo Players and Horse device. Moreover, they believe that the Registrar erred by not affording any weight to what they believe is an unquestioned fact that the respective marks will be used in respect of the same goods, thus making it impossible for consumers to discern between the respective parties’ goods.

Those familiar with South African case law will not be surprised by L.A. Group’s aggressive IP protection strategies. The most cited example of L.A. Group enforcement strategies is based on an incident that occurred in South Africa in October 2003.

In October 2003, L.A. Group made an application to seize goods which included genuine Ralph Lauren and US Polo Association clothing items under the South African Counterfeit Goods Act. L.A. Group was the registered proprietor in South Africa of the POLO trade mark, in addition to separate registrations for the Mounted Polo Players and Horse devices, one of which was a direct copy of the Ralph Lauren Mounted Polo Player logo, its predecessor in title having defeated an attempt by Ralph Lauren to reclaim the mark in 1977.

The seizure led to the director of the company that imported the goods being charged criminally for counterfeiting and a civil action alleging both counterfeiting and infringement. The criminal court found that the goods were not counterfeit and dismissed the charges, while the civil court came to the same conclusion, but found that some of the goods infringed.

The Kenyan matter is still pending before the High Court and we will be sure to post an update once the court releases its judgement on the matter.