Welcome to #IPThursday but on a Sunday.

The following thread concerns the Bafana Bafana trade mark and what I would describe as a huge mess in handling one of South Africa’s most famous names.

I’ll start this story with a history lesson for Football lovers. In 1961, the South African football team was represented by all white players. This was in line with the apartheid system and the national law at the time.

On the same year, FIFA took the decision to ban the South African national team from all FIFA related competition. This was because the team did not comply with FIFA’s non-racial discrimination policies.

The ban lasted for about 30 years and it was lifted in 1992. Soon thereafter, a new non-racial body named SAFA was formed. The SA football team was readmitted into the system and sought to quickly reintegrate itself in international competitions.

On 7 July 1992, the SA football team played its first match since readmission. It ended in a 1-0 victory over Cameroon in Durban (Dr Khumalo scored a pen). There was one big issue though....the team did not have a “nickname”.

It’s very common, almost mandatory, for a sports team to be given a nickname. The rugby team was already known as “The Soringboks” and the cricket team “The Proteas”.

These names aren’t just names however, they are registered trade marks that the governing bodies can exploit commercially through selling merchandise, t-shirts and advertising.

As the team grew in popularity, 3 journalists at one of the Sowetan newspaper began referring to them as “Bafana Bafana” translated, The Boys The Boys.

SAFA didn’t like the name and they turned down the chance to adopt it. They felt it was silly referring to a group of men as “The Boys”. They also felt that the name did not instill fear in the opposition. Eg. the Zim team is called the Warriors, Cameroon the Indomitable Lions,

After successfully hosting the Rugby World Cup in 1995, South Africa replaced Kenya as the hosts of the 1996 AFCON. The name Bafana Bafana had picked up a lot of momentum in the country.

Unbeknown to SAFA, in 1993 a company known as Stanton Woodrush (Pty) Ltd had registered the trade mark “Bafana Bafana” in relation to clothing (class 25).

Trade marks have to be registered in relation to the goods you are going to sell or use the mark. Each item falls in a certain category (class). There are 45 classes in terms of the Nice classification of goods and services. Clothes fall in class 25.

Their CEO, Wayne Smidt saw an opportunity to make money off selling clothes with the name and when he realised SAFA had not registered it, he decided to acquire the rights himself.

South Africa won the 1996 AFCON. The name Bafana Bafana, which was already popular really took off. The name Bafana Bafana became synonymous with the team not only locally, but globally as well.

The following year, after realising the commercial potential of the name Bafana Bafana, SAFA and its clothing sponsor at the time, Kappa, decided to file trade mark applications to register the name in ALL 45 classes. Thats over 45 separate trade mark applications.

I’ll take this chance to explain what happens at the Trade Marks Office at the CIPC.

1. You file your trade mark in relation to the goods/services you’re fmusing it for.
2. It is examined by the registrar to see if it qualifies as a trade mark......

3. The registrar checks the register to see if someone has registered a similar mark.
4. If she finds a similar mark to yours on the register, then your trade marks gets refused. (its best to contact an IP lawyer (Me!!) to do a search for you before filing your trade mark.

Back to our story, SAFA’s applications to register the Bafana name were unsuccessful because Stanton Woodrush already had a registered trade mark for the name. This was a huge issue because they had acquired many sponsorship deals with Castle Lager and others who were also using.

Facing a potentially embarrassing situation, SAFA first went to the journalists who originally came up with the name to get them to transfer copyright in it to them. Thereafter, they went to court and filed an application to cancel Stanton Woodrush’s Bafana trade mark registered.

SAFA argued that they were the true owners of the trade mark for two reasons.
1. They had used the mark in 1992, before Stanton Woodrush. Backtracking on their earlier stance that they didn’t like the name.
2. They had the copyright agreement from the original journos.

The matter was heard in the High Court and the judge dismissed the case on the basis that SAFA were not the owners of the name and they had no legal standing to object to Stanton’s registration. They had never used the name commercially at all before Stanton’s registration.

Furthermore, the judge said just because a name is synonymous with you, it does not mean you own it. You have to intend to use it commercially and also actually use it. SAFA had not done that when Stanton made the application.

During this dispute, Bafana Bafana qualified for the 1998 World Cup in France. Bafana fever was at its peak, with songs and widespread coverage of the team. Enroute to its first ever world cup, the name Bafana Bafana became even more valuable.

After the judgment, SAFA were initially dismissive, they went as far as saying that they will come up with a real name. However, given the popularity of the name and that another World Cup (2002) would be fast approaching, they appealed the 1997 judgment.

In the Supreme Court of Appeal, SAFA argued again that they were the real owners of the trade mark. They had evidence for days that they had been using it extensively. However, the case was dismissed. Stanton had registered it first.

After their appeal was dismissed by the SCA, SAFA were forced to negotiate with the CEO of Stanton Woodrush, Wayne Smidt. I don’t know the exact terms of the agreement, but it was reported that SAFA would own 50.1% of the name and Woodrush 49.9%. Co-ownership basically.

In 2004, SA won the rights to host the 2010 world cup. With this came an even bigger opportunity to make money off merchandising. A profit making scheme for the trade mark did not sit well with SAFA.

And so enters a more radical individual into the mix, then Minister of Sports April Fikile Mbalula. Remember the issue of changing the name, Mbaks brought it back again.

Mbalula wanted them to get rid of the name before hosting the tournament. Reiterating the earlier stance that no team of men should be called “The Boys”. He also wanted a stronger more fearful name. The name Bafana does have a history of being derogatory.

The World Cup came and naturally, Bafana Bafana merchandise was flying off the shelves. Stanton Woodrush maintained co-ownership of the trade mark. This was a perfect opportunity for them to make money off the name.

It was only a year after the world cup, in 2011, that SAFA finally purchased exclusive righs to the name Bafana Bafana in relation to clothing (class 25) for R5million.

At this stage, after 3 world cups and over half a dozen AFCONs, Stanton Woodrush had probably made millions off the Bafana Bafana trade mark from merchandising.

This is a mess SAFA could have avoided by simply registering the name when it gained popularity in the early 1990s. It is inconceivable that a football governing body could go for 19 years without full ownership of the trade mark of the team’s name.

Only one way to decribe SAFA’s handling of this whole ting.

Big Lesson: When you start using a name. It’s best to register it as a trade mark as early as possible. Once someone else does, you’re usually in for a difficult fight. Stay Safe Good People!!