Tuesday, 30 April 2013

Mandela name fight - much ado about nothing?

Last year Natacha Rey (Adams & Adams) produced a guest post on how to use IP to protect the Madiba legacy. Just yesterday, Times Live and other newspapers produced a report about the alleged land grab by the Mandela family to claim rights to the name by registering various companies using the Mandela name. The report has gained some viral popularity on the back of similar claims over copyrighted works and art, which is unfortunate because it misrepresents how rights in the names are obtained.

Natacha's clairvoyant post illustrated that trade marks are the primary means of protecting a name. The names of companies are not right generating in the same sense and although a failure to clear the company register can lead to loss of rights in a name (as illustrated here) they are nothing more than a name on a register. What matters is who uses the name, how it is used and who owns it on the national register. The alleged marriage in community of property (to Graca Machel) also does not necessarily mean that the rights in the name will automatically be owned by a surviving spouse, which seems to be the cause of what has been alleged.

Some of the rights in the name Mandela are simply incapable of being assigned or owned by anyone else as they are inextricably linked to his personality. However, the rights in the name MANDELA (and others) which symbolise that personality as a trade mark, are capable of being registered and have been so. These rights are capable of being transferred. If the owner of that trade mark is a trust, then the rights in that trade mark are governed by the legal agreement governing the trust.

The challenge with the Mandela brand is that it is so well known that in some cases it will have difficulty functioning as a trade mark. The late Elvis Presley and Princess Diana estates experienced this problem. However, properly managed, the Mandela brand is quite capable of being protected and if the family members are concerned, well they should be if they are infringing it.

Although there is some limited protection under the Trade Marks Act for family members using their own names, they need to ensure that they use their full name (Mandela is not enough) and that they are not guilty of passing off eg by creating a false impression that the services or goods purveyed by the company concerned are endorsed by the man himself.

What the owners of the Mandela trade mark need to do, is properly assert rights over the trade mark against the family members under appropriate company legislation, if that is what the situation requires. A failure to do so may not only devalue the brand but also create possibilities for non family members to use the name.In the event that the family name is entitled to be used, then this should be recorded in a licence with rights accruing to the owner of the trade mark MANDELA.

Two recent cases in RSA, involving the finance publication Bloomberg and the late Steve Biko, illustrate the comments made in this post and will be summarised for your consumption in a post in May.

No comments: