Wednesday, 18 June 2025

Afro Leo

BOTSWANA: Registered trade marks are a defence to passing off


On 27 March 2025 Judge Busang sitting in the High Court of Botswana at Lobatse handed down a judgment dismissing Specsaver Botswana’s claim for an interdict and other relief including punitive costs against Strategic Ideal Holdings (Pty) Limited (Spec-Savers South Africa’s licensee), based on passing off.



The case is notable, from a legal standpoint, because:

a) it is only the second reported passing off judgment in Botswana;

b) it affirms the value of a registered trade mark in Botswana, being a positive right i.e. a right to ownership and use of the trade mark, and not simply a negative right to stop others from using; and

c) it shows that litigants in a passing off case must meet the evidentiary thresholds for establishing reputation and the misrepresentation.


Specsavers Botswana had alleged the adoption of their mark SPECSAVERS in 1999 and use of the mark thereafter. Spec-Savers South Africa had registered their trade mark from 2001 and begun using it, through their licensee, in 2014. Specsavers Botswana claimed that they had established a reputation symbolised by the mark such that the use by Spec-Savers South Africa licensee of SPEC SAVERS was likely to cause deception or confusion.


Spec-Saver’s South Africa defended the application by challenging the evidence filed in support of the passing off claim and by arguing that they were entitled to use their registered trade mark SPEC SAVERS because the rights conferred on them by their trade mark registration, were positive.


Section 74 and 81 of Botswana’s Industrial Property Act No.8 of 2010 (the Act) states that:

"74. (1) The exclusive right to a mark under this Act shall be acquired by Registration in accordance with the provision under this Part.

81. (1) Registration of a mark shall confer on the registered owner, the right-

(a) to exclusive ownership of that mark;

(b) to prohibit third parties from using the mark; and

(c) to institute court proceedings against any person infringing his or her rights.”


The court referred to case law out of Botswana, Namibia and South Africa on the delict of passing off finding that Specsavers Botswana had failed to provide sufficient evidence of reputation and misrepresentation, and that there was no detailed explanation of how the Respondent's conduct caused confusion. Further, that Spec-Saver’s South Africa’s trade mark was lawfully registered, providing them with a positive right to use and own the trade mark. The case was therefore dismissed with costs, including costs of counsel, and is a notable win for Spec-Savers South Africa.


Specsavers (Pty) Limited has appealed the decision.

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Tuesday, 17 June 2025

Afro Leo

Sport, brands, success and South Africa


Fifteen years ago, to the month, South Africa hosted the FIFA World Cup Football tournament which also sparked a great deal of commentary on this blog on a number of intellectual property issues. 
Branding, sponsorships, counterfeiting, changes to legislation and the "World Cup effect" created by its spotlight on South Africa (and Africa generally) all became talking points, a much-needed boost for our economies and exposure for IP issues. 

Indeed, on a personal level, within hours of this blog post - The [arrest? of the] Beautiful [at the] Game, I became immersed in negotiations between FIFA, Bavaria and the girls who were arrested for alleged ambush marketing. The circumstances of that incident are such that it is still widely noted as a seminal moment not only of that World Cup, where it stole headlines for a week, but also for discussion on what best practice is for ambush marketing concerns, the brilliance of marketers and also how to deal with ambush marketing effectively... or not. For me it meant missing a few games of football but gaining insights unlikely to be repeated in my lifetime.  

Another topic that came to the fore was the use of national flags and state emblems and the legitimacy of it all. This post "Flagitis" became rather popular even though its conclusions were inconclusive and revealed the confusion surrounding permissions for use of national flags for promoting business. Fast forward on that topic and suddenly, in 2025, we have seen a number of notices in the national gazette permitting the use of the flag by a variety of different organisations in South Africa. People have obviously found the Minister to talk to and are bugging him regularly!

The examples are illustrated in the pic and were requested by organisations as diverse as the South African Revenue Service (the tax guys), Big 5 Cookware (as it says on the tin), Olive or Twist (campaign creators) and SA Greetings (gifts and accessories). A typical notice will read: 




National pride was again on display this weekend with South Africa cricketers wining, against most betting odds, the ICC World Test Championship. This is against a backdrop of South Africa becoming Rugby World Cup winners in 2024 in remarkably close and challenging circumstances, and recent global wins for athletics, surfing and UFC. It's no surprise therefore that local marketers wish to latch onto national emblems in the interest of their organisation's success and the South African public obviously oblige. 

It's not all roses (or rather, proteas) though; South Africa football jerseys are the slowest off the shelves based on their lacklustre performances and brand South Africa got somewhat "trumpled" in the White House recently. Tellingly, in RSA's arsenal on that occasion in May was none other than two RSA golfing stars and a 14kg book, not on development economics, but on, you guessed it, South African golf courses. Yes, golf is a possible way to Trump's heart but it's really a reflection of a national brand that is steeped so much in sport. Not just sport mind you, but success in sport. 

Darren Olivier
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Afro Leo

BOMB SQUAD BEER? - PLUCKING A TRADE MARK OUT OF THIN AIR

"Bomb squad" is a term well-known to supporters of the Springboks, the South African national rugby team, as referring to the reserves that come on after halftime.  They are seen as an intimidating factor, having a significant impact as fresh players.  On account of this the term has become part of the national psyche and sport folklore.  It bears mentioning that the term has even now found its way into the political realm.


Malcolm Marx, a hooker, and prop Steven Kitshoff, now retired, are prominent players associated with the bomb squad.  These players have, however, taken their association with the term bomb squad a step further by, in fact, becoming entrepreneurs and establishing a business based on the use of the term as a trade mark.  The term is being used in relation to, amongst others, beer, and clothing.  Trade mark applications for BOMB SQUAD – in a logo format - have also been filed.   The applicant for the mark is listed as Marxhoff (Pty) Ltd, a name no doubt derived from the two players' surnames.


The originator of the concept of a bomb squad - fresh players, predominantly forwards - is the coach of the Springboks, Rassie Erasmus, who is in the employ of the South African Rugby Union (SARU).  However, it is not known who first used the term in relation to a reserve squad of players.  Be that as it may, should the SARU nevertheless be the "owner" of the mark?


In the Bafana Bafana case (SAFA v Woodrush) judge Harms commenced his judgment by stating (paragraph 1) that:

"The national soccer team had the nickname Bafana Bafana 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…”

 

From the evidence it appeared (paragraph 7) that:

“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.”


The SAFA did delay enough though to allow a third party to apply for registration in relation to clothing.  In the matter, an expungement application brought by the SAFA against a registration for BAFANA BAFANA in class 25 held by Woodrush,  the SAFA relied primarily on its intention to conduct an extensive merchandising program.  This ground was rejected though (paragraph 20) because an intention to use does not create a preference to registration.  However, even though the third party was successful, today, following no doubt some financial consideration being paid, the mark BAFANA BAFANA is indeed registered in the name of the SAFA.


Returning then to the BOMB SQUAD mark, it appears that Mr. Marx and Mr. Kitshoff do not have any special claim to the mark merely because they were indeed members of the bomb squad.  In this regard it was said by Harms JA in the Bafana Bafana judgment (paragraph 14) that the proprietor of a trade mark need not be its originator.   He referred to the ruling of Nicholas AJA in the Victoria’s Secret matter:

“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 players mentioned were thus not the originators of the bomb squad term, but they were first to appropriate it through the filing of a trade mark application as far back as May 2023 (the exact date of first use is not known).  In the Bafana Bafana decision it was stated (paragraph 9), with reference to earlier case law, that there is no exclusive right to a name.  However, 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.  Two examples from the music world can illustrate this principle further.  UB40, the name of the famous band, is actually derived from the British Government’s unemployment benefit form 40.  Likewise, the band LED ZEPPELIN took their name from the famous Zeppelin air ships, one of which was involved in the disastrous Hindenburg accident.  A South African example could be where the infamous tax form IRP5 is adopted as the name for a music group.


In conclusion, it seems that the mechanism involved in cases such as that of the BOMB SQUAD trade mark, is that a word or expression “floating about” is claimed as a specific person’s trade mark - this expression then can be registered validly.  Until then, it is basically res publica.  In the sports world, the mere fact that a body is charged with regulatory authority over a particular sport, would not automatically give it preference to registration.  A caveat should be noted though, being that the existence of an association of a term with a sporting body or a person is always a factual question.  Thus, if the SARU, for instance, conducted a merchandising program using BOMB SQUAD in a trade mark sense, it could provide the Union with passing off rights in the fields concerned, or, in a registration context, with common law rights that could see it triumph.  So it is not necessarily a free for all situation.  

Wim Alberts

University of Johannesburg

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Friday, 28 March 2025

Afro Leo

South Africa: Inaugural CIPC Youth Awards

Last night Afro Leo attended the inaugural CIPC Youth IP awards in the aptly name Heartfelt arena in Pretoria. 


It was glitzy evening with 400 RSVPs consisting of dignitaries, contestants, representatives from industry, other important people and, of course, yours truly, all dressed up like a James Bond cast.


CIPC's Amanda Lotheringham was instrumental in putting it all together and gave an inspiring speech, together with Rory Voller, the Commissioner of CIPC, reinforcing the need for IP structures to form a bridge between innovation and value creation.














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Wednesday, 13 March 2024

Darren Olivier

Van's Aircraft let down by its IP Policies as well

Van's Aircraft is a very successful producer of experimental aircraft and aircraft kits based in the US. Their fleet of RVs (as they are known) have, over the past 50 odd years, become a major player in general aviation, the term used to describe aviation for private pilots and basically everything outside of commercial air transport. In 2023, over 1100 of their fleet were flying worldwide and are popular in Africa. Robin Coss Aviation Vans Aircraft Cape Town is their highly regarded distributor.

However, despite their success in the tangible world, their investment in intangible rights to protect and nurture their innovation appears to have been strangely absent, vastly undervaluing their company at a significant time of need in their history.

In December 2023, Van's Aircraft made a surprising announcement that they had severe cash flow problems and had been forced to file for Chapter 11 Bankruptcy protection - a legal way of retaining ownership of their assets under a plan to restructure and remain in business. Their woes relate to supply chain challenges, problems with laser cut parts, and faulty primers. 

The Chapter 11 process requires Van's to publicly disclose their financial position for scrutiny. It is here that we make the observation that their intangible asset value is set at ZERO, and that there are no disclosures of any registered or unregistered intellectual property relating to the brand or designs of aircraft. They are simply recorded as "unknown". 

A check of the national registers using TM View's database confirm their lack of protection, not listing a single trade mark in their primary market - the United States. Indeed, in class 12 (the class covering aircraft), it would appear that Vans Footwear have the jump on them. It would also appear that they do not have registers recording unregistered rights in their designs and knowhow in their various kit planes. 

To understand the significance of this, for over fifty years Dick VanGrunsven has grown this company, yet those efforts reflect as ZERO in the brand value section on the balance sheet. 

Despite the challenges of valuing brands and intangible assets accurately, few who know this company, would deny that its intangible value is substantially more than "nothing". The reality then is that the company is undervalued at a critical time when it is trying to regain trust from their stakeholders, which include their own customers. 

Some may argue that by reflecting the brand as ZERO they deter potential creditors from seeking to bankrupt the company and secure the trade marks or other IP at auction at some time in the future, but this is misguided. In fact, it may just do the opposite because the auction value would be low using the valuation the company has placed on its intangibles.


By contrast, Cessna the bastion of the traditional, non-experimental trainer and small airplane market, has a swathe of trade mark registrations supporting its brand value. The reason for this is because brand valuation, properly executed, entails an assessment of the integrity of the rights in the company's intellectual property. This illustrates the while the experimental aircraft segment is flourishing, one should not experiment with IP if you want to your brand valuation to flourish. In a world where safety means everything, overlooking intellectual property governance and protection is particularly ironic.

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Sunday, 30 July 2023

Darren Olivier

A freedom to operate, sustainably.

Last week I spent time in Botswana for a hearing. It also gave me an opportunity to pilot my first international flight. It’s a wonderful thing when two passions align in a way that is also sustainable, thanks to local innovation.


My daughter taught me about the fun of “Insta Reels” and this one I share with you now. I hope you enjoy it as much as we did capturing it!



Botswana is an impressive country. Its people are friendly, welcoming, and very capable. It is relatively small but vast (about 5% of South Africa’s population and 25% of its land mass) and an important business hub in the region. It is also home to a number of tourist attractions, particularly in the Okavango area.


Gaborone, the commercial capital, is open for business. Its skyline illuminates at night with brands of well-known eateries, banks, fashion houses and other commerce. Any exchange control is light, and the benefits of foreign direct investment are clear with an apparently, thriving middle class. Hotels are busy and their rates comparable, if not higher, than those in Johannesburg 300kms away, suggesting a healthy level of demand and investment.


The courts are stately and proudly bear “minimum standards of service” in their opening halls. Litigating in Botswana on intellectual property cases is somewhat familiar because their laws and procedures are largely based on the English system. That said, it is embryonic when it comes to the number of published decisions on this area of law and as a result, lean on advocacy and common law from South Africa. This is why we were present.


Getting there by road from South Africa is relatively painless except for border control which can lead to unpredictable, if not significant, delays. It is also not entirely stress free as road safety issues and hijackings (on the SA side) have been reported and naturally scare those who must travel between the countries. As a result, the country’s policing system has a no-tolerance approach which acts in stark contrast to their otherwise amiable demeanor. Necessary, it would seem, to protect what the country has nurtured.


Flying commercially is the preferred way of travel but it’s not inexpensive, and although it is a short hop, it can take as long as road travel once airport waiting times and clearance delays are considered. Although it is safer than road travel, it is significantly less sustainable for such a short trip. This is where a private plane becomes an option as it can be the most affordable, safe (compared to road travel), and sustainable option, especially if the plane is made by a company like Sling Aircraft, itself a wonderful example of South African innovation.


Sling Aircraft are based just south of Johannesburg and over the last two decades have made private plane ownership and flight relatively affordable for businesspeople with long commutes or requirements for local travel to tricky to reach places. A secondhand Sling 2 or 4 seat aircraft, for example, is no less affordable than an executive vehicle and has significantly less environmental impact. It runs on ordinary unleaded petrol and uses less fuel than an equivalent road trip. It also does not depreciate as fast a car and is simply a joy to travel in. It took just 1hr 20mins to travel the distance between the cities.


Of course, flying in small planes is not for everyone and although it is convenient, it is vulnerable to vagaries of the weather so careful planning is required. There is no perfect option when it comes to travel across our continent, but general aviation or small plane travel, marginalised in recent times, can make a comeback thanks to local innovators, like Sling Aircraft and others.


Flying oneself is an experience quite unlike any other and this aspect is not represented in a comparison of facts and figures between the different forms of transport. It is a privilege, a challenge, a responsibility, and a freedom, none of which can be measured. I am just grateful that my own journey to learn to fly, which started a few years ago, has culminated in this example of practical integration into my professional career, not only as a commuter option which I have been doing now for some time, but also to connect people, skills and highlight innovation, in a sustainable way.


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