Tuesday 20 April 2010

Darren Olivier

World Cup 2010: fake shirts pour in

At the weekend a Swazi man was arrested at the Oshoek Border gate to South Africa after allegedly being found with 12 000 fake World Cup soccer shirts. The South African police also seized counterfeit South Africa soccer team jerseys and other items. The man was also found with counterfeit Nike sneakers, baseball caps, waist coats, Giorgio Armani trousers, Harry Hill T-shirts, Paul Smith and Hugo Boss trousers. (The Times of Swaziland)

Swaziland is of course landlocked which means that this seizure and arrest is likely to be indicative of a far greater problem coming through the ports. Indeed, the same article states that over 60 000 fake South African national team shirts have been seized in the past 45 days. Afro Leo can believe this - cheap (and likely fake) Bafana Bafana shirts can be bought at traffic lights he passes through on his way to work.

The Bafana Bafana Trade Mark - vulnerable?

Bafana Bafana is the nickname of the South African national side which is likely to make enforcing the trade mark difficult - a problem also faced by the Springbok rugby emblem discussed here. The name Bafana Bafana has to be shown to be a trade mark (ie an indication of trade origin for goods/services) and not just a nickname for the national side for it to be able to sustain a counter attack under the Trade Marks Act that it is not a trade mark. To borrow from both Jacob and Harms - "Does the use of Bafana Bafana denote a chink in the distant cash registers of SAFA?"

Take for example the picture alongside - is this a picture of a man with a flag from or made under the control of the registered owner of the Bafana Bafana trade mark, SAFA? Or is this man just showing his allegiance to his national team or indicating that the flag, is the flag of his national team? In other words is BAFANA BAFANA capable of functioning as a trade mark or is it simply a nickname of the national side, coined, as it was, by the Sowetan in 1992 and made valuable (not by SAFA - not that necessarily matters but is interesting nonetheless) but by the public? SAFA will have trouble enforcing its numerous BAFANA BAFANA trade marks - this case decided in 2002 also reminds us just how much trouble they might have.

Darren Olivier

Darren Olivier

Subscribe via email (you'll be added to our Google Group)


Write comments
20 April 2010 at 11:45 delete

One cannot help noticing the absence of comment on either the source of the fakes, or the nationalities of the perpetrators.

It is axiomatic that any trademark cure via the courts is prohibitively expensive, potentially dangerous and destructive to any business, the latter appearing primarily due to cost of litigation and implications arising from loss of litigation.

It is probable that the flood of fakes and counterfeits come from no more than ten possible countries, and it is even more probable that many of these are ten are key or main trading partners of South Africa.

So what to do? Blame Swaziland? Blame Mozambique? This is hardly constructive or productive, and though these two countries may well figure in a solution, the onus must be South Africa to catch a wake-up and initiate a preventive approach with trading partners at the highest levels. South Africa’s challenge with this approach though is structural, with IP not figuring in the top echelons of Trade and Industry, and no-where in the Cabinet. To whom would the top IP people (cabinet level) in other governments speak to in South Africa, when South Africa has no IP knowledge or capacity in Cabinet?

Perhaps this whole FIFA experience, and the immense economic loss to so many facets of the country’s economy, will spark South Africa leadership’s conscience about the reality of operating a national economy in the knowledge economy of the world today.

The game is essentially lost and over when all the law can do is chase prosecution, in an irresponsibly outdated IP legal framework, at great expense and with the outcomes fraught with risk.

Were perhaps the key trading partners of South Africa, whose nationals figure in the illicit trade of fakes, to be told tactfully and bluntly at a Cabinet level , of firstly South Africa’s key national brands (BAFANA BAFANA for example), and secondly of severe consequences to their nationals being caught counterfeiting such, there may be a change in behaviour.

More to the point on the issue as to whether Bafana Bafana can be protected, is the need to recognise that with national brands, there needs to ownership and protection at a national level, and that this is the only way to prevent privateering.

Why should the national soccer teams brand not be under strict controls like every other aspect of the game is?

The marketing opportunity arises out of the existence and performance of the national soccer team, which is the property of the country, not private individuals. Same as the national flag.

One can only hope that the issues raised around Bafana Bafana can attract the powerful energy, interest and political will of Deputy Minister of Trade and Industry, Thandi Tobias-Pokolo.

21 April 2010 at 03:57 delete

Thanks Graeme - my comments by para above:

- I am not sure if this criticizes my lack of comment or the lack of comment in underlying article – either way, the underlying article states that the fakes are likely to have come from China and that the nationality of the perpetrator (here I mean, the man in possession) is Swazi.

- On the contrary, RSA courts for trademark litigation are one of the cheapest in the world. Furthermore, as this blog has repeatedly reported getting a warrant for the seizure of suspected counterfeit goods is incredibly easy and relatively cheap (it involves a request to local magistrate who needs to be persuaded that a suspicion exists).

-In my experience, China dominates the list. Many fakes are also made in RSA.

-Apart from legislation protecting certain sectors (eg the local music sector ie copyright and why I suspect this piece provoked you) RSA IP legislation is actually pretty good when it comes to protecting IP interests in sports events. The ambush marketing provisions are, for example, contentious because they are so sponsor friendly. As for IP featuring in Cabinet, good call! but the reality is that few “top IP people” feature in any Cabinet. This is not defeatist – I agree that IP needs to have more voice at government level and, in many ways, the IP sector itself is to blame for that. By the way, the “Minister” defined in the Merchandise Marks Act is the minister for Trade and Industry – ie Rob Davies.

-I agree – a wonderful example of how FIFA uses IP for its own gain. Perhaps RSA could learn how IP can and does protect a creation ie the World Cup event.

-I agree - prosecution is only one aspect of preventing a significant counterfeit problem (The IP laws around FIFA are pretty strong though and some quite extraordinary). Education, as you express below is another.

-See above.

-Nationalising brands like Bafana Bafana (on its own) is not going to work (under trade mark legislation) unless the brand is made to work and function as a trade mark. England faced the same problem with its Rose. One could treat the brand as eg a State Emblem because there is protection for State Emblems and the like. If this is what you meant by nationalisation then the term BAFANA BAFANA needs to be declared as such but there are problems with that too because nobody in government appears to police the use of those signs (eg the flag).

- SAFA needs to adopt an advanced trade mark policy to ensure that the brand BAFANA BAFANA functions as a trade mark, to ensure that it gets protection under the Trade Marks Act.

-This argument has merit but see above.