Bafana Bafana - Who Owns This Nickname for the South African Soccer Team?
This article was first published in the June 2003 edition of De Rebus, the South African Attorneys´ Journal, and is published here with permission.
In the recent judgment of South African Football Association v Stanton Woodrush (Pty) Ltd and the Registrar of Trade Marks (as yet unreported), the Supreme Court of Appeal dismissed a claim by the South African Football Association ("SAFA") that it owns the trade mark BAFANA BAFANA in relation to clothing.
In July 1992, three journalists used the name BAFANA BAFANA in connection with the South African national soccer team, and the nickname soon became synonymous with this team for the football supporting public.
SAFA, which manages the national soccer team, was at first reluctant to adopt the name BAFANA BAFANA as a commercially valuable name for the team because it was regarded by some local cultures as derogatory to refer to a team of men as "boys".
In 1993 a businessman, Mr Stanton Woodrush ("Stanton"), was the first to apply for the registration of the name as a trade mark in connection with clothing. In 1994, a sponsor of the national soccer team, Kappa Holdings Ltd, filed applications for the trade marks BAFANA and BAFANA BAFANA in class 25. Subsequently, SAFA took assignment of these marks from Kappa Holdings Ltd, and in 1997 SAFA embarked on an extensive filing program in respect of the name BAFANA BAFANA for virtually all goods and services in practically all classes.
Believing itself to be the true proprietor of all intellectual property rights in the BAFANA BAFANA name, SAFA then applied for an order removing the Stanton mark from the Trade Marks Register. The Court dismissed the application on the ground that SAFA was not an "interested person" within the meaning of this term as used in the Trade Marks Act No. 94 of 1993, which provides that only an "interested" party has legal standing to seek relief.
SAFA took the matter on appeal, basing its attack primarily on the allegation that Stanton was not entitled to the trade mark because it belonged to SAFA.
The Appeal Court had to decide whether or not SAFA had, at the time of Stanton´s application, any entitlement or legal interest in the name. The Court concluded that SAFA had failed to make its case, and the appeal was dismissed with costs. In reaching its conclusion, the Court stated that an intention to use a mark does not create a preference to registration, and that the proprietor of a trade mark need not be its originator. The Court also stated that there is no reason why an entrepreneur should not take the benefit of an advantage he could gain in the marketing of his goods and services by associating them with names that have become famous, provided that he does not commit the delicts of passing-off or defamation, or offend against any specific statutory prohibition.
Accordingly, despite the BAFANA BAFANA name being synonymous with a national sports team and having gained a special national symbolism, a businessman has been allowed to exploit the name commercially in connection with items of clothing because he was the first to apply to register the name as a trade mark and no prior use of the name could be shown.
Spoor & Fisher Pretoria
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