Nelson Mandela Foundation acts against the unauthorised use of Mandela's name

A little-known Limpopo store has found itself on the wrong side of the Nelson Mandela Foundation (NMF) for using the late global icon and former president’s name and trademark.

The Mandela Discount Shop was found to be located at an isolated truck parking area between Musina and the Beitbridge border post selling household goods and foodstuffs.

The NMF first became aware of the name in March 2019 and investigations revealed that no one among the persons trading on the property knew the shop and that the premises had undergone several renamings – from Gateway Truck Park, Bell Park to Limpopo Truck Park.

It complained that the Mandela Discount Shop’s name was likely to mislead consumers into believing the store is associated with the foundation.

According to the foundation, the shop was taking unfair advantage of the Mandela legacy and contrary to public interest.

The NMF stated that the Mandela Discount Shop’s continued use of the name will cause prejudice because it has no control over the quality or nature of goods sold, and substandard or unlawful trading may unjustifiably tarnish the reputation of the Mandela name and legacy.

Additionally, it argued that prejudice to the foundation outweighs any possible prejudice to the shop, whose conduct appears opportunistic and strategically aimed at leveraging public goodwill associated with the Mandela name.

The Companies and Intellectual Property Commission (CIPC) monitored the Mandela Discount Shop over an extended monitoring after it failed continuously to file annual company returns between 2022 and 2023, which the NMF hoped would lead to its deregistration and avert the need for the foundation to file an application disputing its name.

However, the Mandela Discount Shop successfully filed the outstanding returns in November 2023 after receiving a demand letter, showing its intention to continue trading using the disputed name.

The NMF then approached the Companies Tribunal, an agency of the Department of Trade, Industry and Competition established in terms of the Companies Act, to force the Mandela Discount Shop to change its name to one that does not incorporate or use the well-known “Mandela” trademark or any confusingly similar mark.

The Mandela Discount Shop did not oppose the NMF’s application. This is despite receiving correspondence and a letter of demand and it was subsequently served via an e-mail address verified by an investigation.

An investigator was able to confirm that the Mandela Discount Shop was operational and its contact details were able to be confirmed and a further demand was sent but it still failed to cooperate.

In finding in favour of the NMF, tribunal member Minah Tong-Mongalo said given the iconic and global fame of the Mandela name, ordinary people will overwhelmingly recall “Mandela” not the descriptive additions such as “Border” or “Discount Shop”.

“Evaluated through the perspective of the average consumer, the dominant word Mandela in the respondent’s (Mandela Discount Shop’s) name is likely to trigger an assumption of a connection with the applicant (NMF), particularly because the applicant is well-known in South Africa and internationally, and because the Mandela legacy is associated with public interest, charity, and dignity,” the tribunal ruled.

Last month, the tribunal ordered the Mandela Discount Shop to change its name to one that does not incorporate or use the word “Mandela” or any confusingly similar mark within three months of receipt of its order and file an amendment to its memorandum of incorporation with CIPC reflecting such change.

“Failing compliance, the second respondent (CIPC) is directed, in terms of section 160(3)(b)(ii), read with section 142 of the (Companies) Act, to change the first respondent’s name to its company registration number,” reads Tong-Mongalo’s ruling.

The tribunal also ordered costs to the NMF after having taken reasonable steps to avoid litigation including multiple investigations and requests for voluntary compliance.

loyiso.sidimba@inl.co.za