Polo and Pony are two words associated with the wealthy and oligarchs. Years back, the label of an equestrian riding with a stick to hit a ball would not have been a problem as the bourgeois would either walk into a ‘who is who’ shop and order a polo T-shirt or polo perfume.
Others who could afford a plane ticket would fly to watch polo with tinted sunglasses from a private club in Beverly Hills, US, or the Netherlands, and then purchase a handbag with the label of a polo player seated on a horse with a raised mallet at play to carry a watch, a cap, T-shirt, shoe, designer perfume from the brand as trophies from the sport.
As money would definitely not be a problem here, the issue was the use of the word polo. One used polo in capital letters while another used it in lower case. There was also a beef in the angles of the horses, the posture of the riders, how they hold their mallets, and the characters of the transcription of the marks. It all boiled down was who owns the right to sell the polo label to the rich in Kenya.
From court documents, Beverly Hills Polo Club licensed Lifestyle Equities CV to sell its top-of-the-range men’s top wear, women’s clothing, kids wear, men’s footwear, and women’s handbags under the polo umbrella. The company was registered in Amsterdam, Netherlands.
On the other hand, there’s LA Group (PTY) Ltd. The firm based in South Africa is a distributor of branded clothing and footwear products. A cursory look on its website www.lagroup.co.za indicates that it sells polo, converse shoes, Mango, Pookie, Samson, Brentwood, Mille, and Dickies.
In court, both Lifestyle and LA Group identified their clientele as affluent, refined, successful, cautious, and deliberate consumers. The items they sell under the brands of both firms were also depicted as costly and luxurious.
“It is not in doubt that a purchase would ordinarily require patient and keen visual analysis thereby reducing or negating the chances of confusion,” observed Justice Florence Mugambi.
In its case, LA Group complained that Lifestyle was breaching its trademark in Kenya. It sought to have the trademark removed as Lifestyle had allegedly, for over a decade, used a strikingly similar mark that created consumers in the Kenyan market.
The registrar of the trademark dismissed its case. Aggrieved, the South African firm moved to the High Court, arguing it had an established market in Kenya and it was in limbo between its brand and that of Lifestyle.
LA Group complained that their brands have the word polo and the image of a polo player and a horse.
To prove its case, LA Group filed a sales summary of the brand by Hans Apparels between 2007 and 2010, another list of sales by Manix Ltd between 2012 and 2017, and a summary of its expenditure for Polo clothing throughout Africa from 2007 to 2017.
Lifestyle, on the other hand, dismissed LA Group’s argument that its brand was well known in Kenya. To establish whether LA Group had made its case, Justice Mugambi said that she had to first establish the firm’s penetration of the Kenyan market. However, she observed that it was difficult to tell from the case if LA Group’s polo was popular in Kenya.
“I find great difficulty in holding that the appellant’s marks were well-known marks in Kenya for various reasons. It is not clear how much of this was spent in Kenya but even more, data on the accessibility of the various channels and geographical coverage of the advertisements in Kenya is not clear,” said Justice Mugambi.
At the same time, she said it was unclear how many people read the magazines that it advertises in and if there’s a huge following of its brand online.
“The bottom line is that to prove that a mark is well known, there must be evidence of knowledge of the appellant's marks in the minds of the consumers. In the absence of such proof, I am inclined to agree with the submission that the incontestable status of a mark does not automatically confer strength or a status of being well known to a mark," she observed.
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LA Group also argued that the words ‘Beverley Hills’ and ‘club’ in Lifestyle’s brand as not obvious so that they can reduce the confusion.
However, Lifestyle stated the trademark has been used since 1982 and has been a successful brand in the US, having been deliberately chosen due to its association with the glamorous suburb, Beverly Hills in Los Angeles.
It argued that its mark is a composite sign comprising the words BEVERLY HILLS a downward facing semi-circle, capitalized and in bold font; a rider on the back of a galloping horse with a raised arm holding a long-handled mallet at the middle; and the words POLO CLUB below the horse in a slight line, in bold and capital.
Closer home, it argued Nairobi Polo Club uses the same label. Although LA Group lost its case in Kenya, it won against Lifestyle in South Africa.
Judges in South Africa found that it was impossible to tell how a rider was holding the mallet, and the angle of the horse but forget about the written characters. They ruled that Lifestyle’s brand was confusing and ordered the cancellation of the mark BEVERLY HILLS POLO CLUB and logo.