YOU CAN’T HAVE SIMILAR TRADEMARKS – COURT
By Dickson Jere
You all know the Polo designer clothes, right? The trademark depicts a rider on a pony with a raised mallet with the pony in motion like one on my golf T-shirt below. This is the well known international brand. However, another similar mark was registered by PACRA in Zambia, which had instead two riders on two horses following each other. They were registered in the same class of goods which includes clothes.
Now, the owners of the actual Polo trademark challenged the registration of the new one at PACRA, arguing that the two marks were similar and will confuse the public. The owners contended that most Zambians visit the prestigious Sandton Mall in South Africa where there is a specific Polo Shop that sells only Polo products. Zambians and others would be confused if this new Polo device is registered in Zambia.
Upon studying the case, the Registrar at PACRA went ahead and ruled in favour of the new trademark to be registered in Zambia saying those who know the original Polo mark will not be confused with the new one which had two horses and two riders.
Unhappy, the Polo owners appealed to the High Court. The Judge looked at the two trademarks and ruled that they were similar and cannot be used on the same class. He, simply, rejected the registration of the Zambian mark.
Owners of the Zambian ones were not happy with the decision. They appealed to the Court of Appeal, arguing that the trademarks were different and that they cannot cause confusion in the market.
Three Judges analysed the two trademarks and ruled that there was no confusion as the two were distinct from each other. Therefore, PACRA was right to register the second mark.
The original owners were perplexed. As expected,they climbed to the Supreme Court where they argued that the two trademarks were the same and same category. They all had polo players on the horses with raised mallet.
A panel of three Judges of the Supreme Court heard the case and determined thus:
“Both marks are Polo Pony devices which depict the sport of Polo,” the Judges observed.
“One has to look at the two marks very closely to note that the Respondent’s mark has two horses and two riders,” the Judges said and added that the two were “confusingly similar” and therefore cannot be both registered.
The Court noted that the marks had same size and one had to look at them close to see the difference.
“Visually, conceptually and phonetically, the marks are confusingly similar,” the Judges noted.
“A mark that has achieved commercial success should not be diluted by the addition of other confusingly similar marks in the class they are registered…” the Judges ruled.
Case citation – LA Group Limited v United States Polo Association – Appeal 06/2019.
Lecture notes;
1. This is good case on Trademark and Intellectual Property law. You cannot register similar trademark in the same class of goods and services. However, you can register similar but if used in different categories outside the class. Businesses are built on brands that capitalize on the trademarks.