In terms of the definition of a trade mark in the new Act it means a mark used or proposed to be used by a
person in relation to goods or services for the purpose of distinguishing the goods or services in relation to which
the mark is used or proposed to be used from the same kind of goods or services connected in the course of trade
with any other person. The definition in the old Act conveys the same purpose of a trade mark. It serves first as a
badge of origin and secondly as a feature distinguishing the goods of one party from those of another. A trade
connection between the proprietor and the goods or services bearing the trade mark is a fundamental function
served by a trade mark. There is nothing indicating that the applicant will ever make use of the trade mark nor is
there any suggestion that the applicant or any licensee will ever produce a "Bafana Bafana" brand of clothing as
opposed to mere embossment of the nickname on clothing or indeed any other goods.
The applicant's claim to proprietorship of the trade mark is according to this argument, not a bona fide claim. It
can only be a bona fide claim if the applicant has originated, acquired or adopted it and has used it to the extent
that it has gained the reputation as indicating that the goods in relation to which it is used are his or if it has not
been used to the requisite extent suffice [sic] the applicant proposes to use it (Victoria's Secret Inc v Edgars Stores
Ltd 1994 (3) SA 739 (A) at 744I745G). Factors relevant in the determination of an applicant's claim to proprietorship
of a trade mark would include dishonesty, breach of confidence, sharp practice or the like (ibid at 747HI). This
statement will obviously include marks registered without any intention to use them as trade marks but for the
purpose of precluding others from using such marks as trade marks. Such conduct is obviously malicious, vexatious
and in bad faith. This seems to be the only reasonable inference that can be drawn from the applicant's umbrella
applications for registration of the trade mark and its inability to show any user of the trade mark either by itself or
through a licensee. There is also no evidence of an intention by the applicant to use it in the future as a trade mark
for its goods in its business dealings. In my view the contentions submitted on behalf of the first respondent to the
effect that the applicant has failed to prove its locus standi are sound. The application should therefore fail.
The application is dismissed with costs.
View Parallel Citation
For the applicant:
Information not available
For the respondent:
Information not available
Footnotes
1 Also reported at [1998] 4 All SA 1 (A) Ed.