As confusion reigns over who owns the “Home of Legends” trademark, a local entrepreneur Sibongiseni Peter has approached a Port Elizabeth-based law firm to assist him resolve the dispute with the Eastern Cape government.
The provincial government uses the “Home of Legends” as its tagline to sell the province as a tourism destination. But Peter, who is from the Mdantsane township in East London, claimed this week that the trademark belongs to him as he had the idea since 2011 but only applied for its registration in 2018. That process has not been completed. Now he has asked lawyers at SmartLegal to help him reclaim the trademark.
This despite the Companies and Intellectual Property Commission (CIPC) confirming on Monday that there was no trademark registered under Peter’s name.
But the provincial government sent City Press a registration certificate dated December 2012. The “Home of Legends” logo is displayed on the landing page of the provincial government website and features the faces of anti-apartheid activists such as Thabo Mbeki and his father Govan Mbeki; Nelson Mandela, Chris Hani, Raymond Mhlaba, Steve Biko and Robert Sobukwe.
Despite this, Peter claimed he shared the “Home of Legends” idea in September 2011 with a few community members in Mdantsane.
City Press has seen a Facebook message that he allegedly sent to the people he says he shared his plans to set up a non-governmental organisation. He said this was a “brain storming” proposal, but he never received any feedback from them. But that didn’t not stop him from creating the brand.
In 2018 he then approached the CIPC to register “Home of Legends” as a clothing brand. Asked if he thinks someone stole his idea, Peter said he didn’t know. “I didn’t even know that it existed elsewhere as with arising case now.”
In 2018 it was reported that the Eastern Cape government could face a dispute over the use of the trademark after Peter claimed he owned the “Home of Legends” brand. Officials indicated that it would defend the trademark in court.
Peter said he never received any court papers. Now a legal showdown is looming over the trademark.
Law firm SmartLegal’s René Gelderblom confirmed that they were assisting Peter in an advisory capacity. “Peter has signed up for our three-month free legal advice campaign. We are not at liberty to divulge any information about Peter’s matter as we have not consulted with him pertaining your request,” she said.
WHAT CIPC SAYS
On Monday, CIPC’s Lungile Dukwana said there was no trademark registration under Peter’s name.
“Peter applied for the trademark ‘Home of Legends’ on May 24 2018, and it was allocated application number 2018/14223. The application was lodged in class 25 in respect of clothing, footwear and headgear. This application has not been registered. In fact it has not even yet been accepted in order to be published for opposition purposes. The current status of application number 2018/14233 in the name of Peter is ‘accepted with conditions’, and is reflected as such in the electronic trademarks register,” Dukwana said.
He said an official action setting out the conditions on which the application would be accepted was issued on January 21 2019, which Peter still needs to respond to and comply with the conditions for acceptance before the application can be accepted.
However, Peter said he had already responded to the document and showed City Press his responses.
On Tuesday, responding to follow up questions, Dukwana confirmed that Peter had responded to conditions but not the condition which provides to disclaim “home” and “legends”.
“The applicant is required to agree to the disclaimer requirement under point number four of the official action in writing,” Dukwana said.
Once this is on record, Dukwana said the application would be accepted and a notice of acceptance would be issued to Peter, which must then be advertised in the Patent Journal for opposition.
He said once the opposition period of three months lapsed without a challenge, the registration certificate would be issued two months later.
On Monday Dukwana said that when a trademark is registered it grants an exclusive right to the owner to use it for what it is registered for.
In relation to the Eastern Cape government registration, Dukwana said the province owns two trademark registrations.
“The trademark registration numbers are 2012/34611 and 2012/34612. Both trademarks are still valid and in force. The applications were lodged on 19/12/2012 and proceeded to registration on 24/12/2014. Trademark registration number 2012/34611 is registered in class 35 respect of ‘advertising; promotion of tourism; trade and investment’. “Trademark registration number 2012/34612 is registered in class 41 in respect of ‘entertainment; sporting and cultural activities’.”
Asked if CIPC did investigate if there was already a user of the trademark before Peter’s application was considered, Dukwana said searchers are conducted in the trademarks register before any new application is examined to determine if there are prior identical or confusing trademarks on the register in the respect of the same or similar goods or services, in the name of another person/entity.
He said there was no action for CIPC to take in relation to the dispute between Peter and the Eastern Cape government. This was because the services that were registered for by the provincial government were different from the goods applied for by Peter.
In addition, Peter’s application has not been accepted or registered, Dukwana said.
“The Eastern Cape provincial government could however decide to enter opposition against [Peter’s] application should it proceed to acceptance and publication in future. If they decide to lodge an opposition against [Peter’s application], the CIPC will deal with the opposition as it is required to deal with any other opposition and as prescribed in section 21 and regulation 19 of the Trade Marks Act and the regulations thereunder. The current ‘dispute’ between the parties is not before the CIPC and as such falls outside the mandate of the CIPC.
“In addition, the CIPC does not become involved in private litigation between parties in relation to trademark matters as the CIPC is required to remain objective at all times. A trademark right is a civil right and must be protected and enforced by the holder of the right,” Dukwana said.