SAFA v Stanton Woodrush (Pty) Ltd t/a Stan Smidt & Sons and another
[2002] 2 All SA 617 (T)
Division:
Transvaal Provinical Division
Date:
29 November 2001
Case No:
19821/2000
Before:
Spoelstra J
Sourced by:
M.Snyman and D.Cloete
Summarised by:
D.Harris
Parallel Citation:
2002 (2) SA 236 (T)
. Editor's Summary . Cases Referred to . Judgment .
[1] Intellectual property Trade marks Registration of Application for removal from register Locus standi of applicant
Applicant not entitled to removal of trade mark where its own registration thereof was not supported by an intention to
use the trade mark in relation to goods and services in classes in which mark was registered.
Editor's Summary
The Applicant applied for an order to inter alia, remove a trade mark registration number in the name of the First
Respondent, from the register of trade marks. A voluntary association, the Applicant was responsible for the
management, administration, control and selection of the South African national soccer team. The First Respondent
was a wholesale distributor of footwear and clothing.
Page 618 of [2002] 2 All SA 617 (T)
In 1993 the First Respondent applied for the registration of the trade mark "Bafana Bafana", in a class which
encompassed all usage of the trade mark for clothing and shoes throughout South Africa. The name in question was
the name of the national soccer team. It was common cause that the First Respondent was the first party to apply
for registration of this trade mark. It was only in 1997, that the Applicant began registering the trade mark in
various classes.
The First Respondent disputed the Applicant's locus standi to institute the present proceedings. It contended that
in order to have locus standi to institute the proceedings, the Applicant had to show that, as at the date of the
institution of the proceedings, it was a "person aggrieved" within the meaning of section 33(1) of the Trade Marks
Act 62 of 1963 or an interested person within the meaning of section 24(1) of the Trade Marks Act 194 of the
1993.
Held The cases relevant to the Respondent's argument on locus standi established that a "person aggrieved"
referred to a party who was in some way substantially interested in having the mark removed from the register.
Similar principles applied to the new Act.
In contending that the Applicant was not an aggrieved person, the First Respondent argued that the Applicant
had registered the trade mark in question in a variety of classes, many of which related to services and goods in
respect of which the Applicant could never have really intended to use the trade mark. Although not arguing that it
intended to use the trade mark in relation to all such goods and services, the Applicant alleged that it had entered
into licensing agreements with third parties, and the trade mark was to be used in that manner. However, there
was no evidence showing how the mark had been used by any third party in relation to licensed goods or services
at any time. There was also no evidence of the alleged licensing agreements. Moreover, there was no evidence that
such agreements had predated the First Respondent's application for the registration of the trade mark.
The Court noted that the name of the trade mark was associated with the team elected to play a particular
international match and not with the Applicant. There was no sound reason why intellectual property associated
with the national team was ipso facto owned by the Applicant.
The definition of a trade mark in the new Act refers to a mark used by a person in relation to goods or services,
for the purpose of distinguishing them from the same kind of goods or services connected in the course of trade
with any other person. 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 was nothing indicating that the Applicant would ever
make use of the trade mark in question. The Respondent's argument regarding locus standi was therefore upheld.
Notes
For Intellectual property law see LAWSA Reissue (Vol 20(1), paras 55 91)
Cases referred to in judgment
("C" means confirmed; "D" means distinguished; "F" means followed and "R" means reversed. H N refers to
corresponding headnote number.)