Removal of a trade mark

In LA Group (Pty) Ltd v Stable Brands (Pty) Ltd and Another [2022] 2 All SA 678 (SCA), challenge against cancellation of trade mark registrations, and the grounds for cancellation.

By Merilyn Rowena Kader LLB (Unisa), Legal Editor at LexisNexis South Africa.

Intellectual property - Removal of trade mark from register: The appellant (LA Group) and first respondent (Stable) were competitors in retail clothing. The High Court’s order for the removal of 46 of the appellant’s trade mark registrations from the register of trade marks, in terms of ss 10(2)(a), (b) and (c), 10(13) and 27(1)(a) and (b) of the Trade Marks Act 194 of 1993, led to the appeal in LA Group (Pty) Ltd v Stable Brands (Pty) Ltd and Another [2022] 2 All SA 678 (SCA).

Stable had challenged LA Group’s trade mark registrations on the basis that all the registrations were entries wrongly made in terms of s 24 of the Act. The court cancelled the registrations on various grounds, including that –

• the marks were not capable of being distinguished;
• the marks were descriptive and non-distinctive and had become customary in the bona fide and established practices of the trade;
• the marks had been in non-use for five years or longer;
• the mark’s registration, without a genuine intention to use, coupled with non-use; and
• the likelihood of confusion or deception arising from the manner in which the registrations had been used.

The trade marks consisted of the word ‘POLO’. In terms of s 10(2)(a), a trade mark, which is not capable of distinguishing within the meaning of s 9 is liable to be removed from the register. Where a trade mark consists of words that are merely descriptive of goods or services in a particular class, that mark is not inherently capable of distinguishing the goods or services of a particular person in that class. Stable submitted that to the public, the word ‘polo’ was incapable of fulfilling the function of a trademark, and in the mind of the consumer, ‘polo’ was not exclusively associated with the appellant. The court had regard to the prior use of the trade mark, and found that the mark had been used continuously for a long time since its registration in 1976. The marks had become firmly established in South Africa. The general public would identify goods bearing the POLO trade marks as originating from the appellant. It was established that the trade marks had become distinctive through their use and were not liable to be removed from the register.

The appeal against removal in terms of s 27(1)(a) or (b) of the Act (relating to non-use for five years or longer and registration without a genuine intention to use) succeeded only in respect of some of the trade marks.

Section 10(13) provides that ‘a mark which, as a result of the manner in which it has been used, would be likely to cause deception or confusion’, is liable to be removed from the register. That led to Stable’s reference to LA Group’s use of a mark substantially similar to that of the international Ralph Lauren POLO brand. The High Court erred in its construction of s 10(13). It did not consider the appellant’s manner of use of its own trade marks. Instead, it compared the appellant’s trade marks to those of Ralph Lauren.

The majority judgment concluded that Stable had not established that 46 of the appellant’s trade marks were liable to be removed from the register.

Merilyn Rowena Kader
Legal Editor at LexisNexis