It was reported at the start of February that the South African Football Association (SAFA), after its first national executive committee meeting this year, would investigate the implications of changing the name of our national soccer team Bafana Bafana. That decision has now been taken and all South Africans have been called on to choose a new nickname for the national team. Recommendations were presented by SAFA President Kirsten Nematandani, Deputy Danny Jordaan and Alpha Mchunu at a meeting in Johannesburg on Friday 25 March.

Although this may come as a surprise to some, it is not unmitigated if one considers SAFA's eventual loss in a long legal battle, revolving around the ownership of the name, beginning as far back as 1997.

"Bafana Bafana" was first coined as a nickname for the national team by journalists in 1992 and was quickly adopted by the supporting public. SAFA's initial reluctance to adopt the name left the door open for businessman Stan Smidt to apply for registration of the trade mark BAFANA BAFANA in respect of clothing (class 25) in the name of his company Standton Woodrush (Pty) Limited. He, unlike SAFA, spotted the potential commercial value of the name.

In 1997 SAFA applied to register the BAFANA BAFANA trademark in virtually all trade mark classes. SAFA was however not permitted to use the BAFANA BAFANA name for clothing.

SAFA applied for an order to remove the Stanton Woodrush trade mark in class 25 from the Trade Marks Register, believing that it was the true proprietor of all intellectual property rights in the trade mark BAFANA BAFANA. The Court, however, dismissed the application finding that SAFA was not an "interested person" and had no legal standing to seek relief. SAFA appealed the decision claiming that Woodrush was not entitled to the trade mark because it belonged to SAFA. The Appeal Court dismissed the application with costs.
The Appeal Court found that an intention to use a mark does not create a preference to registration and that the proprietor of a trade mark does not have to be its originator. Nothing stops an entrepreneur from gaining an advantage in marketing his goods and services by associating them with names that have become famous, provided that he does not commit the common law delicts of passing-off or defamation, or offend against any specific legislation. SAFA had to reconcile itself with the bleak reality that it did not own the rights to the name of national soccer team.

No one is completely certain of what exactly happened after the Appeal Court's ruling in 2002. It seems as if some sort of agreement was reached between SAFA and Standton Woodrush resulting in the formation of company called Slam (Pty) Limited. In 2010 it was reported in 2010 that Wayne Smidt, a 40-year-old sports clothing marketer from Johannesburg and son of Stan Smidt, was the man in control of the BAFANA BAFANA trademark. At the time he supposedly owned 49.9% of Slam, which is rumoured to have earned royalties of up to 15% on each BAFANA BAFANA clothing item sold during the World Cup. The remaining 50.1% was owned by SAFA but this mere half-share of the profits from the commercial exploitation of the national team's trade mark was possibly not enough and has resulted in the decision to change the name of the national team, a procedure that will cost millions.

This situation highlights the importance of trade mark registration. Many are unaware that trademarks can be registered prior to actual use. An applicant must simply show a bona fide intention to use the mark in future. Registration of the mark prior to actual use will ensure that any goodwill and repute that is established in the mark through subsequent use is protected by preventing a trade mark from being copied and used illegally and, as we have learned from SAFA's situation, stops a third party registering the trade mark in his own name and benefiting from your goodwill.

Written by Eben van Wyk, Director, Intellectual Property Practice, and John foster, Candidate Attorney, Cliffe Dekker Hofmeyr business law firm