Page 619 of [2002] 2 All SA 617 (T)
Danco Clothing (Pty) Ltd v NuCare Marketing Sales and Promotions (Pty) Ltd and another 1991 (4) SA 850 (A)
Ritz Hotel Ltd v Charles of the Ritz Ltd and another 1988 (3) SA 290 (A)
Valentino Globe BV v Phillips and another [1998] 4 All SA 1 (1998 (3) SA 775) (A)
Victoria's Secret Inc v Edgars Stores Ltd 1994 (3) SA 739 (A)
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Judgment
SPOELSTRA J:
This is an application for an order to remove trade mark registration number B93/0581 "Bafana Bafana", in the
name of the first respondent, from the register of trade marks, to direct the second respondent to rectify the
register of trade marks accordingly, and for an order that the first respondent should pay the costs of the
application.
The applicant is the South African Football Association which is described in the papers as a voluntary association
with legal personality, locus standi in iudicio, perpetual succession and the power to acquire property and incur
obligations. The applicant promotes, advances, administers, controls and encourages the game of association
football (soccer) in the Republic of South Africa. This includes the management, administration, control and selection
of the national soccer team that represents the country.
The first respondent, who trades as Stan Smidt and Sons, is a wholesale distributor of footwear and clothing. The
second respondent is the Registrar of Trade Marks who is cited in his official capacity. No substantive relief is being
sought against the Registrar.
On 28 January 1993 the first respondent applied for the registration of the trade mark "Bafana Bafana" in class
25, which encompasses all usage of the trade mark for clothing and shoes throughout South Africa. It is undisputed
that the first respondent was the first party to apply for registration of this trade mark. On 20 April 1998 this trade
mark was registered (B93/0581) in the name of the first respondent in terms of the Trade Marks Act 62 of 1963 in
respect of "clothing including boots, shoes and slippers". The applicant contends that this registration was wrongly
effected and that it should be removed from the register of trade marks.
On 23 September 1994 a company, Kappa Holdings Ltd, filed applications for the trade marks Bafana Bafana and
Bafana under applications 94/10323 and 94/10324 in class 25. This application postdated the filing of the first
respondent's applications by about 18 months.
On 10 September 1997 the applicant obtained registration of the trade mark "Bafana Bafana" in class 1 to 24 and
class 26 to 42. The registration was only issued on 30 June 2000. On 26 November 1997 the applicant also applied
for the registration of the trade mark Bafana and football device in classes 1 to 45 including class 25 in respect of
clothing, footwear and headgear. These latter applications are still pending. During July 1996 Kappa assigned its
rights in and to the trade mark applications to the applicant. The applicant procured the substitution of the applicant
as applicant of these marks.
Page 620 of [2002] 2 All SA 617 (T)
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The first respondent disputes the applicant's locus standi to institute these proceedings. If this contention is correct
the matter ends there. It should therefore be considered first.
The first respondent contends that in order to have locus standi to institute these proceedings the applicant must
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 ("the old Act") or an interested person within the meaning of
section 24(1) of the Trade Marks Act 194 of the 1993 ("the new Act"). The new Act commenced on 1 May 1995 and
repealed the old Act.
I do not consider the change of wording of "person aggrieved" in section 33(1) of the old Act to "interested
person" in section 24(1) of the new Act of any real significance in this matter. It is clear from the cases which
considered the term "person aggrieved" that it refers to persons "who are in some way or other substantially
interested in having the mark removed from the register" (Ritz Hotel Ltd v Charles of the Ritz Ltd and another
1988 (3) SA 290 (A) at 308AB) and "a genuine and legitimate competitive interest in the trade to which the
offending mark relates" (Danco Clothing (Pty) Ltd v NuCare Marketing Sales and Promotions (Pty) Ltd and another
1991 (4) SA 850 (A) at 855CD). In Valentino Globe BV v Phillips and another1 1998 3 SA 775 (A) at 781 Harms JA
states:
"The onus rests upon the applicant for removal to establish, as a reasonable possibility, that he is a person
aggrieved. For this purpose it is assumed that the trade mark is wrongly on the register. A wide and liberal
interpretation is given to the term 'person aggrieved'. The applicant must have a substantial interest in the mark
or must substantially be damaged by it remaining on the register. The fact that the registered mark constitutes an
obstacle to the registration of a mark applied for by the applicant is prima facie evidence of an interest, but if that
application for registration was in bad faith, vexatious or without any substance, the prima facie inference is