Friday, September 23, 2005

In the South African Football Association-case, a decision of the Supreme Court of Appeal, trade mark rights to the words BAFANA BAFANA were at issue.
The name BAFANA BAFANA became familiar through the press and later through the public. The South African Football Association (SAFA) controlled and selected the South African National Soccer team. It adopted the view that it was the holder of all the intellectual property rights relating to the name. It stated in its papers that it has embarked on an extensive licensing and merchandising programme, and also filed trade mark applications in virtually all 42 classes of the Trade Mark Register. The case however dealt with one particular class, namely class 25, which relates to clothing.
SAFA attacked the registration of a third party, Stanton, on the basis that, in view of its rights to the name, the use of BAFANA BAFANA by Stanton was likely to deceive or cause confusion. SAFA’s primary claim was that it took assignment of the copyright which it believed existed in the name, from a journalist of The Sowetan. This contention was however abandoned in the course of the case.
It was held that the mere fact that the use of BAFANA BAFANA on clothing would call to mind the national team and encourage the sentimental soccer fan to purchase it, does not mean that there is a misrepresentation. The court mentioned that the problem in this regard is that there is a lack of understanding as to the nature of trade mark use. This was apparent from the fact that the use of BAFANA BAFANA as the name of the national team on a sponsor’s message was regarded as trade mark use. There was also an inability to distinguish between sponshorship and trade mark licensing agreements.
It was stated that if Kappa, a sponsor of the team, used the name BAFANA BAFANA on clothing, it was not used to indicate origin but sponsorship. There was also some confusion in the court papers as to whether or not SAFA or Kappa owned the rights to the name BAFANA BAFANA. Having considered all the relevant elements, the court held that SAFA has failed to establish the necessary grounds for an order that the trade mark of Stanton should be expunged.
It is clear that the symbols of national sport teams fall, to a certain extent, within the public domain, and one of the important functions of a trade mark, to indicate origin, may not necessarily feature strongly in such an instance. Members of the public may purchase an article merely because it depicts a particular symbol, irrespective of its origin, that is, whether manufacturer A or B produces it, is immaterial. This line of reasoning was followed in a British decision dealing with, for instance, the ELVIS PRESLEY trade mark. Fortunately, for trade mark owners, there are different views, such as that recently expressed in relation to the ARSENAL trade mark where a "fan" was prevented from selling memorabilia relating to the club. It must be borne in mind also that a mark in the public domain, or having become generic, can in extraordinary circumstances again be made trade mark material. This for instance occurred when JEEP was "plucked" from the public’s vocabulory as being a term for what would today be referred to as a 4X4. To return to the SAFA-case, it may not be inappropriate, in the case of symbols of teams such as the Springboks, the Proteas, or Bafana Bafana, for the Government to utilise legislation to control the use of those terms. This approach has been followed in relation to, for instance, the Olympic Games, and the Cricket and Rugby World Cup. But again, as is often found when the law aims to combat a particular problem, there can be an overkill. For instance, would BAFANA BAFANA shoe repairs cause prejudice to anyone? One must always guard against scoring an own goal.