Football association loses fight for clothing mark

South Africa

In South African Football Association v Stanton Woodrush (Pty) Ltd, the South African Supreme Court of Appeal has dismissed the plaintiff's claim that it owns the BAFANA BAFANA trademark in relation to all goods, including clothing.

The term 'bafana bafana' (meaning 'the boys, the boys') was used for the first time in July 1992 in connection with the national football (soccer) team by three journalists working for the Sowetan newspaper. However, Stanton Woodrush, a Johannesburg businessman, was the first to apply to register the words as a trademark, doing so in 1993 in connection with clothing. In 1994 a sponsor of the national team, Kappa Holdings Ltd, also registered the mark BAFANA BAFANA but in relation to football. In 1996 the South African Football Association (SAFA), which manages the national team, took assignment of this mark from Kappa and in 1997 embarked on an extensive filing programme of the mark for virtually all goods in practically all classes.

SAFA then, believing itself to be the true proprietor of all rights in the BAFANA BAFANA mark, took action against Woodrush's company, Stanton Woodrush (Pty) Ltd, applying for an order cancelling its mark with respect to clothing from the Trademarks Register.

The court of first instance dismissed SAFA's application. On appeal to the Supreme Court of Appeal, the lower court's ruling was affirmed. The appellate court stated that there is no reason why an entrepreneur should not take advantage of a name in marketing his goods or services so long as he does not commit the offence of passing off or violate any specific statutory prohibitions.

As a result, despite the BAFANA BAFANA mark being synonymous with a national sports team, Woodrush has been recognized as owning it in connection with items of clothing and is allowed to exploit it commercially in that regard.

Megan Reimers, Spoor & Fisher, Pretoria

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