LA Group (Pty) Ltd v Stable Brands (Pty) Ltd and Another

LA Group (Pty) Ltd owned numerous registered trade marks incorporating the word POLO and polo player/pony devices across multiple classes. It instituted trade mark infringement proceedings against Stable Brands (Pty) Ltd, which used United States Polo Association marks under licence. Stable Brands counter-applied for the removal of 46 of LA Group’s trade mark registrations, alleging they were wrongly remaining on the register due to lack of distinctiveness, descriptiveness, customary use, non-use for five years, absence of genuine intention to use, and likelihood of deception or confusion arising from the manner of use. Although LA Group withdrew its infringement application, Stable Brands persisted with the counter-application. The High Court ordered the removal of all 46 registrations. LA Group appealed to the Supreme Court of Appeal.

The appeal was upheld with costs. The High Court order was set aside and replaced with an order removing only specified trade mark registrations (or parts thereof) under s 27(1)(a) and (b) for non-use or lack of intention to use. The remaining registrations were retained. The counter-applications based on lack of distinctiveness under s 10(2) and likelihood of confusion under s 10(13) were dismissed.

The case is significant for clarifying the scope and interpretation of s 10(13) of the Trade Marks Act, confirming that confusion arising from the manner of use of a mark may be assessed in its market context and is not limited to inherent characteristics of the mark. It also illustrates the SCA’s careful, registration-by-registration approach to trade mark removal applications and reinforces the evidentiary burden on parties seeking expungement for non-use or lack of intention to use.