Stanton Woodrush on Bafana Bafana trademark saga

The name Bafana Bafana is not owned by Stanton Woodrush. Stanton Woodrush only owns the right to use the mark on apparel, headwear and footwear (class 25 of the trademark registry). All other marks in the name are owned by SAFA. SAFA does not require, and has never required, Stanton Woodrush's permission to use the name, and the idea to change the name Bafana Bafana has been driven by SAFA.

Stanton Woodrush has always indicated to SAFA that it is a willing seller of the name, and that it would not be unreasonable as regards the price. SAFA, however, has never engaged with Stanton Woodrush to discuss the purchase, and has certainly never presented an offer to Stanton Woodrush.

Stanton Woodrush was in fact advised last week Thursday, 7th April 2011, by SAFA's attorney's that SAFA has no intention of purchasing the trade mark and that they will be going ahead with the name change of the South African national men's football team.

Certain comments have been made in the press as regards Stanton Woodrush's ownership in the trade mark, and Stanton Woodrush would like to clarify the situation:

• Stanton Woodrush (Pty) Ltd legitimately registered the trademark in class 25 some 18 years ago. The trademark was registered well before SAFA officially associated the national team with the Bafana brand. Stanton Woodrush expended significant effort and resources in building the brand well before it was officially associated with the national team. The registration of the brand was not opportunistic or taken to frustrate SAFA's rights in the brand. In fact SAFA resisted officially calling the team Bafana Bafana long after Stanton Woodrush registered the brand.

• The Supreme Court recognized Stanton Woodrush as the rightful owner of class 25 and Stanton Woodrush has since developed the brand commercially and has assisted to building the brand what is now commonly identifiable with the South African national football team.

• In July 2005 SAFA and Stanton Woodrush entered into a joint venture company together called Safa Licensing and Management (Pty) Ltd ("SLAM"). Both SAFA and Stanton Woodrush licensed their marks to SLAM (at no cost) in order to jointly license the brand, in all trade mark classes.

• SAFA is a majority shareholder of SLAM (50%+1) and therefore they shared in the royalties of class 25 for both the Confederation Cup and the FIFA 2010 World Cup.

• Stanton Woodrush managed SLAM and the Bafana Bafana official licensing programme in its entirety for the past six years. SAFA has effectively been a silent partner in SLAM and did not contribute to the success of the Bafana Bafana official licensing programme during the build up as well as during the World Cup itself.

• SAFA earned 50% of the profits attributable to the sale of all Bafana Bafana branded clothing and apparel, by virtue of SAFA's 50% shareholding in SLAM (Pty) Ltd. The majority of the profits from the licensing activities in SLAM were made from class 25.

• Stanton Woodrush (Pty) Ltd has always been open to negotiations. Last year October, Wayne Smidt and his legal representative called the meeting with SAFA's then CEO Mr. Lesley Sedibe to discuss the way forward on the trademark and on the SLAM partnership. To date neither official offer nor any communication has been received by Stanton Woodrush from SAFA with regards to the Bafana Bafana trademark registered in class 25.

• There have been reports in the media regarding a speculated purchase price of the trademark. Stanton Woodrush has no knowledge as to where these reports emanated from, other than to repeat that SAFA have never entered into any discussions with Stanton Woodrush as regards the purchase of the trade mark, and have certainly never presented an offer.

• Stanton Woodrush wishes to emphasis that it does not own the name Bafana Bafana, and would never stand in the way of the team using this name. We have at all times indicated to SAFA that we are willing to discuss the sale of our trade mark in class 25.

• There is no reason why SAFA could not continue to call the team by the name BAFANA BAFANA.