South African Football Association v Stanton Woodrush (Pty) Ltd t/a Stan Smidt & Sons and Another

• Jurisdiction: South Africa
• Judge: Harms JA, Schutz JA, Brand JA, Conradie JA and Heher AJA
• Judgment Date: 27 November 2002
• Citation: 2003 (3) SA 313 (SCA)
• Docket Number: 5/2002
• Hearing Date: 18 November 2002
• Counsel: J J Gauntlett SC (with him A R Sholto-Douglas) for the appellant. C E Puckrin SC (with him J N Cullabine) for the first respondent. No appearance for the second respondent.
• Court: Supreme Court of Appeal

Harms JA:

[1] The national soccer team had the nickname 'Bafana Bafana' [1] thrust upon it during 1992, first by the press and thereafter by the public. The appellant, the South E African Football Association (SAFA), manages, administers, controls and selects the team. After some years of hesitation and reluctance, SAFA adopted the name as a commercially valuable appellation for the team. Believing now that it is the 'true proprietor and the holder of all the trade mark and other intellectual property rights in and to' the name, it claims to have committed itself to the exploitation of its F rights by means of an extensive licensing and merchandising programme. For instance, it embarked on an ambitious campaign of registering as a trade mark the name 'Bafana Bafana' by itself and also in association with different logos on virtually all goods and services and in practically all classes under the Trade Marks Act 194 of 1993 (the G current Act). Presumably, as a result of all this the public in due course will be able to purchase even 'Bafana Bafana' manure, artificial limbs and eyes and teeth or use 'Bafana Bafana' beauty care and legal services.

[2] The cause of this litigation is the fact that the first respondent (Stanton) holds a trade mark registration 93/0581 for word mark 'Bafana Bafana' in class 25 in respect of clothing H (including boots, shoes and slippers). Dissatisfied with this state of affairs, SAFA applied to the Transvaal Provincial Division on notice of motion for an order removing the mark from the register of trade marks and directing the Registrar to rectify the register accordingly. [2] Spoelstra J in the Court below dismissed the application on the ground that SAFA was not an 'interested person' within the meaning of the term as used in I s 24(1) of the current Act: only

Harms JA

an 'interested' party has legal standing to seek this relief. Consequently he found it unnecessary to A deal with the multi-pronged attack by SAFA on Stanton's registration. Later he granted leave to appeal and before us counsel for SAFA argued the case on fewer grounds than those foreshadowed by the papers.

[3] Before turning to the remaining grounds of attack, some preliminary matters have to be dealt with. Stanton's application for B registration of the trade mark was made under the repealed Trade Marks Act 62 of 1963 (the old Act) on 28 January 1993, which date is the deemed date of registration of the mark. [3] The current Act came into effect on 1 May 1995 and contains transitional provisions [4] that can be summarised as follows. [5] Applications and proceedings C commenced under the old Act are to be dealt with under its provisions as if it had not been repealed; questions relating to the original entry of 'old' marks are to be dealt with under the old Act; but whether a mark should remain on the Register is dealt with in terms of the current Act. D

[4] Something has to be said about the procedure adopted by SAFA in launching these proceedings. SAFA's primary attack on Stanton's trade mark is based on the assumption that Stanton is not entitled to the trade mark because it belongs to SAFA. During the course of the appeal it became clear that SAFA was overly ambitious since, in relation to two of the three grounds persisted in, it is at best E entitled to an order setting aside the act of registering Stanton's trade mark. Both these grounds are based upon the premise that when the Registrar registered Stanton's mark, proceedings concerning Stanton's application, which provided a bar to registration, were still pending. [6] F

[5] Since the present proceedings are primarily review proceedings, SAFA should have utilised the provisions of Uniform Rule 53. [7] SAFA chose not to do so. A failure to follow Rule 53 in reviewing a decision of an administrative organ is not necessarily irregular because the Rule exists principally in the interests of an applicant, and an applicant can waive procedural rights. [8] An applicant is not, however, entitled, by electing to disregard the provisions of the Rule, to impinge upon G the procedural rights of a respondent. [9] If, as is the usual case, the proceedings are between the applicant and the organ of State involved, the latter can always, in answer to an ordinary application, supply the record of the proceedings and the reasons for its decision. On the other hand, as in this

Harms JA

instance, if the rights of another member of the public are involved, and the organ A of State, hiding behind a parapet of silence, adopts a supine attitude towards the matter since the order sought will not affect it (no costs were sought against the Registrar if the latter were to remain inactive), the position is materially different. Stanton was entitled to have the full record before the Court and to have the Registrar's reasons for the impugned decisions available. As a respondent in an B ordinary application it does not have those rights.

[6] The lost file epidemic, moving through our legal landscape like the bubonic plague and sweeping us back into the Middle Ages, has also, it seems, infected the registry. SAFA, we are told, could not locate the file relating to Stanton's trade mark at the Registrar's C office shortly before the application was launched. Nevertheless, there is no suggestion that the other relevant application files [10] were not available. There is also no indication that the Registrar could not, as he would have been obliged to do, reconstruct a file with the assistance of all the parties and attorneys involved. We know, for instance from the founding affidavit, D that SAFA had relevant documents in its possession that do not form part of the papers.

[7] The origin of the name 'Bafana Bafana' formed the subject of a linguistic or perhaps semiotic debate, as if the average consumer or soccer fan could care. One thing though is clear and that is that E three journalists at the Sowetan newspaper were the first to use the appellation in connection with the national team during July 1992. The nickname caught on, somewhat to the annoyance of SAFA, because some cultures regard it as derogatory to refer to a team of (sometimes married) men as 'boys'. Exactly when SAFA realised the value of the name is unclear. Even though there is evidence that a F sponsor of the national team, SA Breweries, and the then President of SAFA referred to the team by that name shortly before Stanton filed its application, SAFA's programme of applying for the registration of trade marks commenced only some four years later, during 1997. G

[8] SAFA lays a general claim to the name 'Bafana Bafana' and this claim requires analysis, because in order to succeed in its application SAFA, as mentioned, has to establish that it is an 'interested' party. [11] For present purposes it will be convenient to determine that issue with reference to the question whether SAFA (or someone from whom it derived a title) had, at H the time of Stanton's application, any entitlement to or legal interest in the name. [12] (I do realise that, to some extent, this formulation tends to conflate the issue of legal standing with that of entitlement but it is not always possible to keep the issues apart.) Put otherwise, does

Harms JA

Stanton's registration invade some legally recognised right possessed by A SAFA?[13] This debate is also relevant in the context of SAFA's attack on Stanton's mark on the ground that it was likely to deceive or confuse, an issue which presupposes some right to the name vesting in SAFA. [14]

[9] The starting point is that there can be no exclusive right in a name. [15] The position was well summarised by Stegmann J: [16] B

'The mere fact that a person has made a name famous does not give him a right of property in the name. He cannot stop other entrepreneurs from making such use of the famous name in the marketing of their goods and services as they may be able to make without either defaming any person or causing a likelihood of confusion as to the origin of the goods or services. Provided that he does not commit the delicts of C defamation or passing off or offend against any specific statutory prohibition, there is no reason why an entrepreneur should not take the benefit of such advantage as he may be able to gain in the marketing of his goods and services by associating them with names that have become famous.'

[10] Much was made in SAFA's affidavits of its intention to merchandise the name as the basis of its entitlement to the name in preference to Stanton. If regard is had to the trade mark registration D programme, the intention to merchandise the name probably arose only during 1997, but assuming that it had the intention prior to Stanton's application, the question arises as to what rights that intention gave rise to.

[11] Character merchandising [17] has become somewhat of a catchphrase, but as so often is the case, E catchphrases tend to obscure rather than enlighten. The concept arose in the licensing of famous comic book characters, such as Mickey Mouse. But licensing the use of such...