South African Football Association v Stanton Woodrush (Pty) Ltd t/a Stan Smidt & Sons and Another (5/2002) [2002] ZASCA 142; [2003] 1 All SA 274 (SCA) (27 November 2002)

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[2002] ZASCA 142
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South African Football Association v Stanton Woodrush (Pty) Ltd t/a Stan Smidt & Sons and Another (5/2002) [2002] ZASCA 142; [2003] 1 All SA 274 (SCA); 2003 (3) SA 313 (SCA); 2002 BIP 159 (SCA) (27 November 2002)

Reportable
Case No 5/2002
In
the matter between:
SOUTH AFRICAN FOOTBALL ASSOCIATION
Appellant
and
STANTON WOODRUSH (PTY) LTD
t/a STAN SMIDT & SONS
First Respondent
THE
REGISTRAR OF TRADE MARKS Second Respondent
Coram: HARMS, SCHUTZ, BRAND, CONRADIE JJA and HEHER AJA
Heard: 18 NOVEMBER 2002
Delivered: 27 NOVEMBER 2002
Subject: Trade marks;
Bafana Bafana
in relation
to clothing; rectification of register; procedure.
JUDGMENT
HARMS JA/
HARMS
JA:
[1] The national soccer team had the nickname
Bafana
Bafana
1
thrust upon it during 1992, first by the press and thereafter by the
public. The appellant, the South African Football Association
(‘SAFA’), manages, administers, controls and selects the team.
After some years of hesitation and reluctance, SAFA adopted the
name
as a commercially valuable appellation for the team. Believing now
that it is the ‘true proprietor and the holder of all
the trade
mark and other intellectual property rights in and to’ the name, it
claims to have committed itself to the exploitation
of its rights by
means of an extensive licensing and merchandising programme. For
instance, it embarked on an ambitious campaign
of registering as a
trade mark the name
Bafana Bafana
by itself and also in
association with different logos on virtually all goods and services
and in practically all classes under the
Trade Marks Act 194 of 1993
(‘the current Act’). Presumably, as a result of all this the
public in due course will be able to
purchase even
Bafana Bafana
manure, artificial limbs and eyes and teeth or use
Bafana Bafana
beauty care and legal services.
[2] The cause of this litigation is the fact that the
first respondent, (‘Stanton’), holds a trade mark registration
93/0581 for
word mark
Bafana Bafana
in class 25 in respect of
clothing (including boots, shoes and slippers). Dissatisfied with
this state of affairs, SAFA applied
to the Transvaal Provincial
Division on notice of motion for an order removing the mark from the
Register of Trade Marks and directing
the Registrar to rectify the
register accordingly.
2
Spoelstra J in the Court below dismissed the application on the
ground that SAFA was not an ‘interested person’ within the
meaning
of the term as used in s 24(1) of the current Act: only an
‘interested’ party has legal standing to seek this relief.
Consequently
he found it unnecessary to deal with the multi-pronged
attack by SAFA on Stanton’s registration. Later he granted leave
to appeal
and before us counsel for SAFA argued the case on fewer
grounds than those foreshadowed by the papers.
[3] Before turning to the remaining grounds of attack,
some preliminary matters have to be dealt with. Stanton’s
application for
registration of the trade mark was made under the
repealed Trade Marks Act 62 of 1963 (‘the old Act’) on 28 January
1993, which
date is the deemed date of registration of the mark.
3
The current Act came into effect on 1 May 1995 and contains
transitional provisions
4
that can be summarised as follows.
5
Applications and proceedings commenced under the old Act are to be
dealt with under its provisions as if it had not been repealed;
questions relating to the original entry of ‘old’ marks are to be
dealt with under the old Act; but whether a mark should remain
on the
Register is dealt with in terms of the current Act.
[4] Something has to be said about the procedure adopted
by SAFA in launching these proceedings. SAFA’s primary attack on
Stanton’s
trade mark is based on the assumption that Stanton is not
entitled to the trade mark because it belongs to SAFA. During the
course
of the appeal it became clear that SAFA was overly ambitious
since, in relation to two of the three grounds persisted in, it is at
best entitled to an order setting aside the act of registering
Stanton’s trade mark. Both these grounds are based upon the
premise
that when the Registrar registered Stanton’s mark,
proceedings concerning Stanton’s application, which provided a bar
to registration,
were still pending.
6
[5] Since the present proceedings are primarily review
proceedings, SAFA should have utilised the provisions of Uniform rule
53.
7
SAFA chose not to do so. A failure to follow rule 53 in reviewing a
decision of an administrative organ is not necessarily irregular
because the rule exists principally in the interests of an applicant,
and an applicant can waive procedural rights.
8
An applicant is, however, not entitled by electing to disregard the
provisions of the rule to impinge upon the procedural rights
of a
respondent.
9
If, as is the usual case, the proceedings are between the applicant
and the organ of state involved, the latter can always in answer
to
an ordinary application supply the record of the proceedings and the
reasons for its decision. On the other hand, as in this
instance, if
the rights of another member of the public are involved, and the
organ of state, hiding behind a parapet of silence,
adopts a supine
attitude towards the matter since the order sought will not affect it
(no costs were sought against the Registrar
if the latter were to
remain inactive), the position is materially different. Stanton was
entitled to have the full record before
the Court and to have the
Registrar’s reasons for the impugned decisions available. As a
respondent in an ordinary application
it does not have those rights.
[6] The lost file epidemic, moving through our legal
landscape like the bubonic plague and sweeping us back into the
Middle Ages,
has also, it seems, infected the registry. SAFA, we are
told, could not locate the file relating to Stanton’s trade mark at
the
Registrar’s office shortly before the application was launched.
Nevertheless, there is no suggestion that the other relevant
application
files
10
were not available. There is also no indication that the Registrar
could not, as he would have been obliged to do, reconstruct a
file
with the assistance of all the parties and attorneys involved. We
know, for instance from the founding affidavit, that SAFA
had
relevant documents in its possession that do not form part of the
papers.
[7] The origin of the name
Bafana Bafana
formed
the subject of a linguistic or perhaps semiotic debate, as if the
average consumer or soccer fan could care. One thing though
is clear
and that is that three journalists at the
Sowetan
newspaper
were the first to use the appellation in connection with the national
team during July 1992. The nickname caught on, somewhat
to the
annoyance of SAFA, because some cultures regard it as derogatory to
refer to a team of (sometimes married) men as ‘boys’.
Exactly
when SAFA realised the value of the name is unclear. Even though
there is evidence that a sponsor of the national team,
SA Breweries,
and the then President of SAFA referred to the team by that name
shortly before Stanton filed its application, SAFA’s
programme of
applying for the registration of trade marks commenced only some four
years later during 1997.
[8] SAFA lays a general claim to the name
Bafana
Bafana
and this claim requires analysis, because in order to
succeed in its application SAFA, as mentioned, has to establish that
it is
an ‘interested’ party.
11
For present purposes it will be convenient to determine that issue
with reference to the question whether SAFA (or someone from
whom it
derived a title) had, at the time of Stanton’s application, any
entitlement to or legal interest in the name.
12
(I do realise that, to some extent, this formulation tends to
conflate the issue of legal standing with that of entitlement but
it
is not always possible to keep the issues apart.) Put otherwise, does
Stanton’s registration invade some legally recognised
right
possessed by SAFA?
13
This debate is also relevant in the context of SAFA’s attack on
Stanton’s mark on the ground that it was likely to deceive or
confuse, an issue which presupposes some right to the name vesting in
SAFA.
14
[9] The starting point is that there can be no exclusive
right in a name.
15
The position was well summarised by Stegmann J:
16
‘The mere
fact that a person has made a name famous does not give him a right
of property in the name. He cannot stop other entrepreneurs
from
making such use of the famous name in the marketing of their goods
and services as they may be able to make without either defaming
any
person or causing a likelihood of confusion as to the origin of the
goods or services. Provided that he does not commit the delicts
of
defamation or passing off or offend against any specific statutory
prohibition, there is no reason why an entrepreneur should
not take
the benefit of such advantage as he may be able to gain in the
marketing of his goods and services by associating them with
names
that have become famous.’
[10] Much was made in SAFA’s affidavits of its
intention to merchandise the name as the basis of its entitlement to
the name in
preference to Stanton. If regard is had to the trade
mark registration programme, the intention to merchandise the name
probably
arose only during 1997, but assuming that it had the
intention prior to Stanton’s application, the question arises as to
what rights
that intention gave rise to.
[11] Character merchandising
17
has become somewhat of a catchphrase, but as so often is the case,
catchphrases tend to obscure rather than enlighten. The concept
arose in the licensing of famous comic book characters, such as
Mickey Mouse. But licensing the use of such characters was nothing
more than a copyright licence. Next to develop was personality
merchandising, the licensing of the names of famous persons such
as
sportsmen, which in our law amounts to the commercialisation of
personality rights. Last, there is the merchandising of well-known
trade marks or of other reputations protectable by a passing-off
action. This means that ‘character’ merchandising rights are
not
new rights. One is simply dealing with the application of existing
principles to new commercial realities.
[12] Turning then in some detail to the merchandising of
well-known trade marks,
18
it is a matter of common commercial practice that owners of these
trade marks tend to use them in relation to goods and services
other
than those for which they had become famous, believing that the
reputation will rub off. Often the right to use the mark on
unrelated goods or services is passed on to others in order to
promote their activities. But it remains a question of fact whether
the average person, who sees, for instance, the name
Coca-Cola
on a T-shirt will regard the use as an advertisement for
Coca-Cola
or as an indication that
Coca-Cola
is the source of the
garment. Put differently, would the purchasing public conclude that
the T-shirt is ‘another horse out of
the same stable’ as the
beverage?
19
[13] The reference to the source must be seen in the
context of the function of trade marks, which is to indicate origin.
A trade
mark is a badge of origin.
20
The importance of this principle in the present context is well
illustrated by a judgment
21
concerning the use of an English rose by the English national rugby
team on its rugby jerseys. The defendant placed the rose on
replica
shirts sold to the public. The court, considering how the rose is
perceived, having regard to its impact on the average
consumer,
found, albeit with reference to the evidence, that the primary
association in the mind of the public evoked by the rose
is with the
national team and that it did not denote the trade origin of the
goods to which it was applied (par 49-50). In the case
of a national
team the team represents the country and an association with the
entity that manages the team is secondary, if present
at all (par
51). Another example to illustrate the principle is to be found in
the facts of this case. I have mentioned that SA
Breweries is a
sponsor of the national team. The name of its well-known Castle
lager appears in bold letters on the team’s jerseys.
This is not
trade mark use because it does not indicate to anyone that Castle is
the origin of the jerseys. All it indicates is
that Castle supports
the team or that the team jersey is used to advertise beer. In other
words, there is a material difference
between sponsorship agreements
and trade mark licence agreements.
22
[14] Two further trade mark principles need to be
stated. The first is that the proprietor of a trade mark need not be
its originator.
23
As pointed out by Nicholas AJA:
24
‘
In terms of s 20(1) [of the old Act] one
can claim to be the proprietor of a trade mark if one has
appropriated a mark for use in
relation to goods or services for the
purpose stated [in the definition of a trade mark], and so used it.
(I use the verb
appropriate
in its meaning of “to take for
one’s own”. It is a compendious expression which comprehends the
words favoured by Mr Trollip
in the
Moorgate
judgment, namely
originate
,
acquire
and
adopt
.)’
The second is that the old Act did not permit
registration of trade marks for purposes of merchandising. Section
20(1) contained
the additional requirement for a valid application,
namely that the use or intended use of the trade mark had to be ‘by
him’
(i.e. the applicant). The only exceptions to this rule are to
be found in s 24. The first, which does not apply, is where the
applicant
applies on behalf of a body corporate about to be
constituted. The second, which is also inapplicable, is where an
application for
registration is accompanied by an application for the
registration of a registered user agreement.
[15] Merchandising of a right protectable by a
passing-off action is also possible. But that requires a
reputation.
25
And the reputation must be such that the public will regard the
defendant’s product as being the plaintiff’s or as being in
some
way associated with the plaintiff or being put out under the
plaintiff’s sanction or control.
26
Sir Robin Jacob, writing extra-curially, formulated a colloquial
test worth adopting: When one sees the name
Bafana Bafana
used
on clothing, does it denote a chink in the distant cash register of
SAFA and no more?
27
[16] Mention has been made of the flood of
Bafana
Bafana
trade mark applications during 1997, and in the papers
much was made of it because it was supposed to indicate SAFA’s
intention
to merchandise and also that use of Stanton’s trade mark
may cause confusion or deception. These facts are irrelevant in the
circumstances
of this case. Later trade marks registrations and
later use of a mark by others cannot drown an existing mark or
reputation
28
(it will be recalled that Stanton’s mark is deemed to have been
registered in January 1993). Lord Diplock’s rules,
29
adopted by this Court,
30
are worth repeating:
'(1) The
fact that the mark is entered upon the register is prima facie
evidence of the validity of the original registration and
of the
right of the registered proprietor to the exclusive use of the mark,
subject however to the rights of concurrent user by any
registered
proprietor of an identical mark or one nearly resembling it.
(2) If the mark was likely to cause confusion at the
time when it was first registered it may be expunged from the
register as an
"entry made in the register without sufficient
cause" unless the proprietor of the mark at that time would have
been entitled
to have it entered on the register by reason of his
honest concurrent use of the mark as a trade mark before the original
registration
of the mark.
(3) If the likelihood of causing confusion did not
exist at the time when the mark was first registered, but was the
result of events
occurring between that date and the date of
application to expunge it, the mark may not be expunged from the
register as an entry
wrongly remaining on the register, unless the
likelihood of causing deception resulted from some blameworthy act of
the registered
proprietor of the mark or of the predecessor in title
of his as registered proprietor.
(4) Where a mark is liable to be expunged under (2) or
(3) the Court has a discretion whether or not to expunge it and as to
any
conditions or limitations to be imposed in the event of its being
permitted to remain on the register.'
[17] Against this backdrop I can now deal with the
particular objections to Stanton’s registration persisted in during
argument.
[18] The first is that Stanton’s mark, having regard
to SAFA’s rights to the name, was likely to deceive or cause
confusion.
Section 16(1) of the old Act prohibited the registration
of such a mark.
31
The papers referred also to the provisions of s 10(12) of the new
Act, which make the likelihood of confusion or deception a ground
for
removal of a registered mark, but these can be ignored in the light
of the quoted Diplock rules.
[19] SAFA’s prime claim to the name was based upon
copyright. In the belief that the journalists or the
Sowetan
were the owners of the copyright in the name
Bafana Bafana
,
SAFA during 1997 procured the assignment of this copyright. Counsel
refrained from arguing the point, presumably realising that
a name is
not a literary work within the meaning of the
Copyright Act 98 of
1978
.
32
Had it been otherwise, no one would have been able, to take an
instance, to reproduce or broadcast the name without infringing
copyright. In any event, the journalists or the
Sowetan
had
no claim to a trade mark, especially in class 25, simply because none
of them used or intended to use the mark at the time in
relation to
goods or services, which is the test for claiming proprietorship in a
mark under
s 20(1)
of the old Act.
33
[20] The next ground relied upon was SAFA’s
pre-existing intention to merchandise registered trade marks.
Assuming that the intention
existed, the contention fails because an
intention to use does not create a preference to registration and, as
mentioned, the old
Act did not countenance the registration of trade
marks for merchandising purposes. I have already disposed of its
reliance on its
later trade mark registrations. Related to this are
the allegations concerning SAFA’s goodwill in the reputation of the
national
team. Whether the public would have thought that a trade
connection existed between clothing and the team in 1993 in the sense
posed
by Sir Robin Jacob’s question requires evidence and not bald
allegations, something with which SAFA’s papers are replete.
34
The mere fact that the use of the name 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 in the
passing-off sense.
35
[21] SAFA also relied upon prior use of the mark by a
predecessor in title. During July 1996, SAFA took assignment of two
trade mark
applications in class 25, one for
Bafana
and the
other for
Bafana Bafana
. These were filed by another sponsor
of the team, Kappa Holdings Ltd (‘Kappa’), on 23 September 1994,
which was after the acceptance
of Stanton’s application had been
advertised. Since these applications postdate that of Stanton, they
could only have proceeded
if Kappa had made prior use of these trade
marks in relation to goods in class 25 unless Stanton’s application
‘was attended
by something more’ such as dishonesty, breach of
confidence, sharp practice or the like.
36
Otherwise Stanton’s application was entitled to precedence.
[22] Since no reliance is placed upon ‘something
more’, the issue revolves around prior use. The deponent to the
founding affidavit,
Mr Hack, boldly proclaimed that Kappa ‘was the
first to so utilize the trade mark BAFANA BAFANA on shoes and
clothing which use
commenced in 1992.’ When called upon to
substantiate the allegation, he failed miserably. The first problem
is that he does not
understand what trade mark use is. This is
apparent from the fact that he regards the use of
Bafana Bafana
as the name of the national team in a sponsor’s message as trade
mark use. He is also unable to distinguish between sponsorship
and
trade mark licensing agreements. The printed material predating
Stanton’s application date merely shows that the name Kappa
was
used, as was that of Castle beer, on the team’s jerseys. If one
assumes that Kappa used the name
Bafana Bafana
on clothing in
the manner suggested by the evidence, it was not used to indicate
origin but sponsorship. There is, moreover, a problem
about the date
of first use. In this regard Hack relies on letters written by
Kappa’s attorneys to Kappa alleging that the first
use was in ‘at
least January 1992’. That is palpably incorrect if one accepts
SAFA’s evidence that the name was first coined
during July of that
year. Another problem relates to who used the name: SAFA or Kappa?
In this regard SAFA alleged in its notice
of opposition to Stanton’s
application (more about this later) that
SAFA
had used the
name on the kit of its national team and on its promotional material.
On the other hand, and destructive of both versions,
is a letter
from SAFA to its attorneys dated 5 June 1995 in which it stated that,
but for the rules of the International Soccer Federation,
FIFA, the
name would have been used on the team’s kit. Last, Kappa informed
its attorneys on 20 June 1994 that if anyone should
have the rights
to register this name it should be SAFA. In spite of this admission
Kappa proceeded to apply for registration in
its name.
[23] It follows that SAFA simultaneously failed to
establish that it was an interested party or that Stanton’s mark,
at the time,
could have caused confusion or deception.
[24] The Kappa applications gave rise to the possible
application of s 17(3) of the old Act, which provided that, where
separate applications
are made by different persons for marks that
would be likely to deceive or cause confusion,
‘the
registrar may refuse to register any of them until the rights of
those persons have, upon application in the prescribed manner,
been
determined by him’.
Regulation 22 prescribes the manner: if different
persons desire to have their rights determined, the Registrar must
call upon each
of them to apply on Form TM41 for a determination of
their rights by the Registrar. The application of a party who
neglects to file
the form within three months after having called
upon to do so, is deemed to have been abandoned. The form has to be
accompanied
by a statement of case and the necessary evidence.
[25] SAFA’s case in this regard is uncomplicated. The
trade mark was registered in spite of pending s 17(3) proceedings.
That
invalidates the registration. For this the Registrar’s record
or reasons are immaterial.
[26] In order to determine whether there were pending s
17(3) proceedings one is hamstrung by the dearth of evidential
material.
What we do know is that Kappa’s trade mark attorneys
(Messrs Spoor and Fisher), who, by the way were also SAFA’s,
without informing
Stanton referred the Registrar to a supposed
practice to invoke the provisions of s 17(3) in the circumstances of
this case. Some
time later, on 11 September 1995, the Registrar
informed Spoor and Fisher that the Kappa applications would be cited
in terms of
s 17(3) against Stanton’s application. On 2 April
1996, apparently out of the blue, the Registrar notified Spoor and
Fisher that
the citation was incorrect and was ‘hereby withdrawn’.
Nearly five months later, on 29 August 1996, a member of Spoor and
Fisher
attended upon the Registrar, where, according to a file note
clearly emanating from the Registrar’s lost file, a hearing
(‘verhoor’)
took place. The Registrar noted that Kappa intended
to assign its applications to SAFA and that Kappa’s opposition to
the Stanton
application would be relinquished. (This was the first
and last time we hear of an opposition by Kappa.) It ends off noting
that
s 17(3) would thereafter be invoked.
[27] SAFA’s argument is that the last note was in fact
an order issued by the Registrar invoking s 17(3). If it is an
order, it
has to be void because it was given without any notice to
Stanton. Section 57 of the old Act provides that where the Registrar
exercises
any discretionary power in terms of the Act, it may not be
exercised adversely to an applicant for a trade mark without giving
the
latter an opportunity of being heard. However, I do not believe
that it was intended to be an order and, as appears from later
correspondence,
neither did Spoor and Fisher who regarded it as an
undertaking by the Registrar to invoke s 17(3).
[28] One has then to consider whether the Registrar’s
promise or undertaking to invoke s 17(3), whether during the
‘hearing’
or on the earlier date of 11 September 1995, brought
the provision into play. The answer is to be sought in the
regulations because
the subsection refers one to the prescribed
method. As I understand reg 22(1), s 17(3) proceedings are preceded
by a call by the
Registrar upon each party to apply for a
determination under s 17(3) on the prescribed form. Only once that
is done, at the earliest,
can there be pending s 17(3) proceedings.
There is no evidence that the Registrar had so called upon the
parties or, had he done
so, that the necessary applications had been
filed. It follows from this that SAFA has failed in its bid to prove
that Stanton’s
mark was registered whilst there were pending s
17(3) proceedings. It is conceivable that the Registrar’s failure
to have honoured
the promise to Spoor and Fisher to invoke s 17(3)
could have been a ground for review, but since SAFA chose not to base
its case
upon a failure by the Registrar to exercise his
discretionary powers properly, I need not consider this aspect any
further.
[29] That leaves SAFA’s final attack on Stanton’s
registration, namely the allegation that there were pending
opposition proceedings
initiated by SAFA when the Registrar
registered the mark.
[30] Pursuant to the advertisement of the acceptance of
Stanton’s application in July 1994, SAFA filed a notice of
opposition during
October. We know very little else except that
there was an exception to the notice, that it was replaced and that a
counterstatement
was filed, when we do not know. SAFA had two months
to file its evidence, failing which the opposition is deemed to have
been abandoned.
37
Important is the fact that SAFA nowhere alleged in its affidavits
that the opposition proceedings were extant at the time when
Stanton’s
mark was registered. Stanton did not deal with the
non-issue, but SAFA’s counsel still wishes us to deduce from the
few letters
in the record that proceedings were indeed pending.
[31] The Registrar is entitled to grant an extension of
time to the objector. Again, this the Registrar may do only after
giving
the applicant an opportunity to be heard.
38
There is no indication on the record that the Registrar did give an
extension, properly or otherwise. On the papers, at least,
it
appears that the opposition had lapsed on the ground of
non-prosecution. This impression is fortified by the fact that, once
again on the papers, no further steps appear to have been taken in
connection with this opposition. Subsequent letters from SAFA’s
attorneys to the Registrar and Stanton’s attorneys refer to a
‘possible opposition’ by SA Football Association Development
Trust but we have not been told what the relationship between SAFA
and the Trust is or what the proposed grounds of opposition were.

The result of all this is that SAFA has also failed to establish this
ground of attack.
[32] The appeal is dismissed with costs, including those
of two counsel.
_____________________
L T C HARMS
JUDGE OF APPEAL
Agree:
SCHUTZ
JA
BRAND
JA
CONRADIE
JA
HEHER
AJA
1
It means ‘The Boys, The Boys’.
2
The Registrar, cited as second respondent, elected to abide the
decision of the Court.
3
Mars Inc v Cadbury (Swaziland) (Pty) Ltd and Another
2000 (4)
SA 1010
(SCA) par 11 and 12.
4
S 3(2), s 70(1).
5
Mars Inc
par 10.
6
S 37(1) of the old Act.
7
The
Promotion of Administrative Justice Act 3 of 2000
was not in
force when the application was launched. In any event, its
regulations have not yet been promulgated.
8
Jockey Club of South Africa v Forbes
[1992] ZASCA 237
;
1993 (1) SA 649
(A)
661E-F.
9
SACCAWU and Others v President, Industrial Tribunal, and Another
[2000] ZASCA 163
;
2001 (2) SA 277
(SCA) par 7.
10
For instance those relating to the Kappa applications, about which
more later.
11
Under
s 33(1)
of the old Act the applicant had to be an ‘aggrieved’
party but nothing turns on the change in terminology.
12
Valentino Globe BV v Phillips and Another
[1998] ZASCA 43
;
1998 (3) SA 775
(SCA) 780J-781D.
13
Elvis Presley Trade Marks
[1997] RPC 543 (ChD) 547.
14
S 16(1) of the old Act.
15
Du Boulay v Du Boulay
(1869) LR 2 PC 430
quoted in
Elvis
Presley loc cit
.
16
Moroka Swallows Football Club Ltd v The Birds Football Club and
Others
1987 (2) SA 511
(W) 531E-G.
17
On this subject and on what follows, see esp John N Adams
Character
Merchandising
2 ed,
Kerly’s Law of Trade Marks and Trade
Names
13 ed par 22-42 to 22-65 and the decision of Van Dijkhorst
J in
Lorimar Productions Inc and Others v Sterling Clothing
Manufacturers (Pty) Ltd
1981 (3) SA 1129
(T).
18
Unless the trade mark is well known it is not entitled to the
anti-dilution protection of s 34(1)(c) or the protection under s
35
of the new Act. The merchandising of marks that do not have that
protection is of doubtful value.
19
Hollywood Curl (Pty) Ltd and Another v Twins Products (Pty) Ltd
(1)
1989 (1) SA 236
(A) 251G-H quoting
‘Frigiking’ Trade
Mark
1973 RPC 752
(ChD).
20
Beecham Group PLC and Another v Triomed (Pty) Ltd
[2002] 4
All SA 193
(SCA) par 8,
Arsenal Football Club plc v Matthew Reed
,
a judgment of the European Court of Justice of 12 November 2002 par
48. The judgments of the ECJ can be accessed at
www.curia.eu.int
.
21
The Rugby Football Union and Another v Cotton Traders Ltd
[2002] EWHC 467 (Ch).
22
Whether a nickname given by the public to a product or
service accrues to the trader is an intriguing question but since it
was
not argued it can best be left for later. Cf
Daimlerchrysler
AG v Javid Alavi (t/a Merc)
[2001] RPC 813
(ChD).
23
SAFA sought to establish that the name is a coined phrase. Whether
or not it is one may have been a relevant consideration under
s 99
of the Patents, Designs, Trade Marks, and Copyright Act 9 of 1916
but is of no significance under modern trade mark law and
practice
where the simpler question is whether the mark is or can be
distinctive.
24
Victoria’s Secret Inc v Edgars Stores Ltd
[1994] ZASCA 43
;
1994 (3) SA 739
(A) 744I-J.
25
Caterham Car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd
and Another
[1998] ZASCA 44
;
1998 (3) SA 938
(SCA). It is only where as a matter
of fact the reputation extends beyond the field of activity of the
plaintiff that merchandising
would be required: cf
Capital Estate
& General Agencies (Pty) Ltd v Holiday Inns Inc
1977 (2) SA
916
(A).
26
That is the basis of the
Lorimar
decision. Further see
BBC
Worldwide Ltd and Another v Pally Screen Printing Ltd
[1998] FSR
665 (ChD) 674.
27
‘Trade Marks and the Olympic Games throughout the Years’
[2001]
European Intellectual Property Review
1
at 3.
28
Caterham Car Sales
par 22.
29
GE Trade Mark
[1973] RPC 297
(HL) 334, also reported as
General Electric Co v The General Electric Co Ltd
[1972] All
ER 507
(HL).
30
Luster Products Inc v Magic Styles Sales CC
1997 (3) SA 13
(A) 24E-I read with 26C-D.
31
Since we are concerned with a statutory objection to the
registration of a mark on this ground, it is unnecessary to consider

the concept of ‘leaning on’ espoused by Van Heerden and
Neethling
Unlawful Competition
(1995) ch 8 and esp p 205,
where the learned authors deal with the advertising value of marks
absent any likelihood of confusion
or deception.
32
Exxon Corporation v Exxon Insurance Consultants International Ltd
[1982] RPC 69.
Copinger and Scone James on Copyright
14ed p
59 n 26, incorrectly, mentions that a South African court had held
differently in
Kinnor (Pty) Ltd v Finkel
. The judgment of
Levy AJ in the Witwatersrand Local Division is reported in Stranex
Judgments on Copyright
352.
33
The question whether the name of a sports team can be a trade mark
on the ground that a sports team cannot be goods or services
need
not be decided. Cf
Tool Wholesale Holdings (Pty) Ltd v Action
Bolt (Pty) Ltd and Another
1991 (2) SA 80
(A).
34
Federation Internationale de Football and Others v Bartlett and
Others
1994 (4) SA 722
(W) did not establish new principles but
is based upon a factual finding (see at 736D). I would like to add a
caveat. The fact
that business people are prepared to pay for
so-called merchandising rights does not provide an answer to the
question, which has
to be answered with reference to the public’s
perception. Cf
Royal Beech-nut (Pty) Ltd t/a Manhattan
Confectioners v United Tobacco Co Ltd t/a Willards Foods
[1992] ZASCA 113
;
1992
(4) SA 118
(A) 123G-H,
Moroka Swallows
at 531B-E.
35
Capital Estate
at 929C-D. Further references can be found in
Webster and Page
South African Law of Trade Marks
(loose-leaf
ed) par 15.5.
36
Victoria’s Secret
747H-I.
37
Reg 28 read with reg 29.
38
S 57 of the old Act.