"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
