Tuesday, 17 June 2025

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

Afro Leo

Afro Leo

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