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 Bafana1 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

1 It means ‘The Boys, The Boys’.

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

2 The Registrar, cited as second respondent, elected to abide the decision of the Court.

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
provisions4 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.

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.

[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

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.

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.

8 Jockey Club of South Africa v Forbes 1993 (1) SA 649 (A) 661E-F.
9 SACCAWU and Others v President, Industrial Tribunal, and Another 2001 (2) SA 277 (SCA) par 7.

[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 files10 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

10 For instance those relating to the Kappa applications, about which more later.

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

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.

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

12 Valentino Globe BV v Phillips and Another 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.

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 merchandising17 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

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).

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-

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.

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
judgment21 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

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).

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

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).

[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

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 (3) SA 739 (A) 744I-J.

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

25 Caterham Car Sales & Coachworks Ltd v Birkin Cars (Pty) Ltd and Another 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.

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 reputation28 (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

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.

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,

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.

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

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).

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

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 (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.

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

36 Victoria’s Secret 747H-I.

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.

37 Reg 28 read with reg 29.

[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.

38 S 57 of the old Act.

[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