THE Nelson Mandela Foundation (NMF) and technology giant Google have succeeded in fighting off entities abusing the names of the late global icon and the multinational company valued at $2 trillion (over R37 trillion).
The Companies and Intellectual Property Commission’s Companies Tribunal recently ruled in favour of both the NMF and Google over the use of the name of the former president and Google by two separate registered entities.
According to a ruling of the tribunal last week, non-profit company Fitbit Foundation has 60 days to file a notice of an amendment of its memorandum of incorporation in order to change its name.
Tribunal member Mohamed Alli Chicktay ruled that Titbits change its name to one which does not incorporate and is not confusingly and or deceptively similar to Google’s, and that it should not include the word Google in any form.
Titbits is an entertaining and informative short-form video app that features high-quality videos in various genres such as comedy, dance, lip-sync, drama and food.
Google first objected to the use of Titbits in December 2022, telling the tribunal that the foundation’s name was confusingly similar to its trademark and would deceive the public.
Fitbit Foundation failed to deregister its name and oppose the application.
”When members of the public see the respondent’s name they will think of the applicant (Google). This may give members of the public the impression that it is owned by the applicant with the potential to cause reputational damage to the applicant,” reads Chicktay’s ruling dated April 30.
The NMF’s trustees also succeeded in stopping the use of the post-1994 South Africa’s first president’s name by another non-profit company named Ban Mandela Frigate.
”It can therefore also be concluded that the word ‘Mandela’ in the first respondent’s (Ban Mandela Frigate’s) name will reasonably mislead the reasonable person to believe incorrectly that there is an association with the applicant’s ‘Nelson Mandela’ and ‘Mandela’ trademarks,” another tribunal member, Joshua Kadish, ruled on April 7.
Kadish said: “I am satisfied that the applicant (NMF) has made out a case for the main application to be considered on a default basis and proceed to deal with the merits of the case.”
He made an administrative order that Ban Mandela Frigate change its name to one which does not incorporate the word “Mandela” as it is in contravention of the Companies Act.
”The first respondent (Ban Mandela Frigate) is hereby ordered to change its name within 60 (calendar) days of date of receipt of this order and to file a notice of amendment of its memorandum of incorporation,” reads the ruling.
The ruling also states that since Ban Mandela Frigate is a company it can use its registration number as its company name immediately followed by the expression “NPC (non-profit company)” should it not be in a position to use another name.
The Companies and Intellectual Property Commission was also directed to change Ban Mandela Frigate’s name to its registration number if the entity fails to change it within 60 days of receipt of Kadish’s order.
loyiso.sidimba@inl.co.za