South African Football Association v Stanton Woodrush (Pty) Ltd t/a Stan Smidt & Sons and Another

The South African Football Association (SAFA), which manages the national soccer team known by the nickname “Bafana Bafana”, sought to remove from the Trade Marks Register a mark registered by Stanton Woodrush (Pty) Ltd for the word mark BAFANA BAFANA in class 25 (clothing). Stanton’s application had been filed in January 1993 under the Trade Marks Act 62 of 1963. SAFA alleged that it was the true proprietor of the name, that the registration was likely to deceive or cause confusion, and that the Registrar improperly registered the mark while other proceedings (including competing applications linked to Kappa Holdings Ltd) were pending. The High Court dismissed SAFA’s application on the basis that SAFA lacked standing as an “interested person”. SAFA appealed to the Supreme Court of Appeal.

The appeal was dismissed with costs. Stanton Woodrush (Pty) Ltd’s trade mark registration for BAFANA BAFANA in class 25 remained on the Register.

The case is a leading South African authority on the limits of trade mark protection for famous names and sports team nicknames. It clarifies that fame, goodwill, or merchandising aspirations do not in themselves confer proprietary rights in a name. The judgment provides important guidance on trade mark function, character and personality merchandising, sponsorship versus trade mark use, and standing to seek rectification of the Trade Marks Register.