South Africa: Territoriality Of Trade Marks : Which Way Is The Polo Horse Running?

Last Updated: 6 June 2012
Article by Charles Webster

In the New Balance case discussed last month the Supreme Court of Appeal also re-affirmed the principle of territoriality of trade marks. New Balance, having failed to prove relevant use of its P-F FLYERS and P-F trade marks in South Africa, had tried to rely on its overseas reputation in arguing that Mr Dajee had no bona fide claim to proprietorship of his POSTURE FOUNDATION – PF trade mark in South Africa.

In his evidence Mr Dajee had said that in 1996 he was looking for a new trade mark and recalled the trade mark POSTURE FOUNDATION P-F but he believed that the use of the mark had long since been abandoned and had not been used anywhere for many years. He was satisfied that the mark was unknown to consumers in South Africa and he alleged that he had adopted and registered the trade mark in good faith in 1996.

The meaning of a "proprietor" of a mark and the relevance of goodwill and reputation was a particularly hot topic in South Africa in the 1980s and 1990s. There were a number of reasons for this. Firstly, our common law did not recognise a reputation without goodwill. Secondly, the Trade Marks Act did not contain a provision dealing with the protection of foreign well known trade marks (in terms of the provisions of Section 6bis of the Paris Convention). Thirdly, the economic sanctions at the time provided fertile grounds for local entities to adopt trade marks which, while well known abroad, had no reputation and goodwill in South Africa so there was nothing, in law, the proprietors of such trade marks could do to stop this. Those of you who dined in the Hard Rock Café in Cape Town in the 1980s may be surprised to learn that there was no link between that restaurant and the already then well known Hard Rock Cafés throughout the world. More obscure was the Dallas restaurant in Pretoria, which was not connected with what was then the very popular Dallas TV series.

McDonald's was more fortunate because the use by the local entitity of the McDONALD'S trade mark was minimal and by the time McDonald's sought to protect its McDONALD'S trade marks in South Africa, international sanctions were over and the new Trade Marks Act had come into force on 1 May 1995 giving statutory protection to well known trade marks. McDonald's accordingly succeeded both on interdicting third party use of the McDONALD'S trade mark and in defending its various McDONALD'S trademark registrations from a non-use cancellation attack on the grounds that its marks were well known, even though, at that time, the McDONALD'S trade mark had never been used in South Africa. This then paved the way for the countless genuine McDONALD'S food outlets which we see in South Africa today.

Another area where there have been a number of issues with regard to the adoption in South Africa of foreign trade marks is in the clothing industry.

The most high profile manifestation of this is the recent opening of genuine GAP stores, the culmination of litigation between the South African claimants to the GAP trade mark and US Gap Corporation, which litigation lasted for well over 10 years. In reaffirming the point of law on proprietorship in the New Balance case, the SCA quoted the Victoria's Secret case, a leading trade mark case of the early 1990s. Despite the protestations of the US Victoria's Secret trade mark owner, there was nothing that they could legally do to stop the adoption by Edgars of the Victoria's Secret trade mark in South Africa for their own range of lingerie.

The situation with the POLO trade mark in South Africa is interesting. In the USA and countless other jurisdictions worldwide Ralph Lauren is the owner of the word mark POLO together with the well known polo player device. However POLO clothing sold in South Africa, also with a polo player device, is not connected in any way with Ralph Lauren. As illustrated in the comparison of the two trade marks, the only differences are the inclusion of the additional trade mark RALPH LAUREN and the fact the polo player devices are slightly different, the most noticeable difference being that the South Africa polo horse faces right while the US polo faces left. As this trade mark appears prominently on the breast pocket of shirts (and other clothing) without any additional word marks (those are typically found inside the collar), the easiest way in practice to identify whether a POLO shirt is of US or South African extraction is to see whether the horse is running towards the centre (US) or away (SA).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.