Trading on Big Brand association is murky water that has not paid off for one SA retailer, but is she the only one?
The week opened with The Sunday Times breaking a David and Goliath story: small Hout Bay retailer under fire from a big international brand who feel the small retailer's name association is a little too similar for suitability. According to press reports Mijou Beller, owner of Dolce & Banana - playing pun on Dolce & Gabbana - doesn't see the harm in the name similarity and even though the case opened six years ago, it is only now she's changed the name to &banana (the website still runs as dolceandbanana.com). She's gone to press, as, she says, she is unable to pay the legal fees demanded by the big Italian luxury house.
"We thought it would be a fun name for our jewelry, it was a glamorous and African name,” says Mijou Beller owner of Dolce & Banana. [Not entirely sure where the African bit comes in?] The store, selling beadwork and jewelry, first received a writ from the fashion house six years ago. "We received a letter requesting that we change our name, but after a while there was no communication so we thought they realized we are of no threat," says Beller.
“Dolce & Gabbana does not have a stand-alone store in South Africa, and our African beaded jewelry is quite the contrary to what the Dolce & Gabbana brand supplies," she continues.
With everyone now online and more and more international brands breaking into the South African market, we are no longer a dark hole at the tip of the continent. Retailers, who in the past, have got away with brand associations or similar names will come under increasing fire. Big luxury retailers that have spent billions building up brand names and will no longer stand for easy association or IP infringement.
It's a murky area. When the new wing of Sandton City opened, shoppers were surprised to find J Crew, the preppy-America brand favored by US First Lady Michelle Obama. But for anyone that has travelled Stateside, they'll realize there is something a bit off about the Sandton offering - for starters, there is a full-stop missing from the name : the US brand is J.Crew - and although the shop-fitting is sophisticated in a way, it's not the same as walking into a Manhattan boutique. According to Queenspark’s Company Secretary, Alan Hodgkinson:
“The brand J CREW was first registered in South Africa by Queenspark’s holding company Rex Trueform Clothing Company Limited in 1987," explains Alan Hodgkinson, Queenspark Company Secretary - the holding company for the retailer. He continues: "It was used continuously by Rex Trueform since about 1990 and the trademarks J CREW and CREW were assigned to Queenspark in 2002."
"We agree that the name is similar to the J. CREW brand marketed in the U.S.A. and elsewhere," he says.
"The J CREW mark is used in Southern Africa by the Rex Trueform Group (Queenspark) with the agreement of J. CREW International Inc. who acknowledges that we own the rights to the J CREW and CREW trademarks in Southern Africa in relation to clothing.
"There is no licensing agreement as Queenspark (Pty) Ltd owns the trademarks in South Africa.”
And for all those buying polo shirts at Polo, do you know that Polo South Africa is not Ralph Lauren Polo? Yes, there is similar iconography, styling and branding but it's not part of the Ralph Lauren stable. Look closely and you'll see the horse is facing the wrong way around. When questioned, Ray James, legal advisor for Polo South Africa said: "We have an agreement with Ralph Lauren which gives us rights to the Polo brand. The pony in Africa faces the left and in Ralph Lauren Polo is faces the right."
So what is happening here? Are local retailers trading on big brand assimilation or are they merely being inventive? I wonder how Woolworths would feel if a Whoolworths opened in Nigeria? We certainly know how Dolce & Gabbana feels…
Reporting by Londiwe Mbhele
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