Power Mandela opposition fails: reputation requires trade mark use not global fame

The UKIPO has dismissed an opposition brought by the Nelson Mandela Foundation against an application to register POWER MANDELA for energy drinks, providing an important reminder that fame of an individual is not the same thing as reputation in a trade mark. The decision also highlights the high evidential hurdle facing parties seeking to establish bad faith.  

The background

Johann Radaeur GmbH applied to register the mark POWER MANDELA for energy and vitality drinks in class 32. The Nelson Mandela Foundation opposed the application based on sections 5(3) and 3(6) of the Trade Marks Act 1994.

The Foundation relied on its earlier registration for MANDELA and argued that the mark enjoyed a substantial reputation connected with the legacy of Nelson Mandela. It contended that consumers would establish a link between the marks and that the application would take unfair advantage of, or be detrimental to, the reputation associated with MANDELA.

The Foundation also alleged bad faith, arguing that the applicant had previously approached it seeking support for the project and proceeded to file the application after receiving a refusal.

Reputation in the person is not enough

Perhaps the most significant aspect of the decision is the UKIPO's treatment of reputation.

The Foundation produced extensive evidence demonstrating the extraordinary international recognition enjoyed by Nelson Mandela, including the Nobel Peace Prize, Mandela Day, educational institutions, lectures and scholarships bearing his name, statutes and memorials and global charitable and educational initiatives administered by the Foundation.

However, the hearing officer drew a clear distinction between the fame of an individual and reputation in a trade mark.

While accepting that Nelson Mandela is globally renowned, the decision emphasised that section 5(3) requires evidence that the sign is used as a trade mark, namely as an indication of commercial origin for goods or services.

The Foundation's evidence largely showed the public honouring or commemorating Nelson Mandela, rather than recognising MANDELA as a badge of origin for commercial goods or services. On this basis, the hearing officer found no reputation in the MANDELA trade mark for the goods relied upon.  

Importantly, there was no evidence of sales, turnover, advertising expenditure, licensing arrangements or trading activity under the MANDELA mark sufficient to establish trade mark reputation.

As a result, the opposition failed at the first stage of the section 5(3) analysis.

A cautionary lesson for owners of famous names

The decision serves as a useful reminder that even globally recognised names do not automatically benefit from the enhanced protection afforded by section 5(3).

For reputation-based claims, rights holders must demonstrate trade mark use, public recognition of the mark and evidence connecting that reputation to specific goods or services.

Evidence of fame, historical significance, press coverage or public admiration may not be enough if it does not establish trade mark significance.

The bad faith claim

The Foundation's bad faith argument centred on discussions between the parties before the application was filed.

According to the Foundation, representatives of the applicant met with it in January 2023 to discuss an energy drink branded POWER MANDELA and sought a partnership. The Foundation maintained that it made clear it would not permit use of MANDELA for commercial exploitation and would object if the project proceeded.

The Foundation argued that the subsequent filing of the trade mark application demonstrated bad faith.

The applicant, however, relied on a 2019 agreement with an individual named Pastor Mandela Amoako Boafo, under which it had acquired rights to use the name MANDELA in connection with beverages and the proposed POWER MANDELA project. The applicant maintained that it believed it had a legitimate basis for using the mark and that discussions with the Foundation related only to a potential charitable partnership.

The hearing officer agreed. Critically, there was no documentary evidence showing that the applicant had sought permission from the Foundation to use MANDELA as part of its brand. The evidence showed discussions regarding cooperation, but not an admission that permission was legally required.

The hearing officer concluded that the applicant had an existing commercial rationale for the mark, it held a prior agreement relating to use of the name MANDELA and The Foundation had not established a prima facie case of bad faith.

Accordingly, the section 3(6) ground also failed.

Key takeaways for brand owners

This decision contains several practical lessons:

•  Fame is not the same as trade mark reputation

A famous individual, historical figure or public personality may enjoy enormous public recognition. However, section 5(3) protection requires evidence that the sign functions as a trade mark for particular goods or services.

•  Evidence matters

Reputation claims should ideally be supported by information such as sales figures, turnover data, marketing expenditure and market share information. Without such evidence, even widely recognised names may struggle to satisfy the statutory test.

• Bad faith remains difficult to prove

The threshold for establishing bad faith remains high. Mere awareness of another party, prior discussions or refusal to collaborate will not necessarily amount to bad faith. Opponents must show objective evidence of conduct falling below accepted commercial standards.

Final thoughts

The decision is a striking example of the distinction between cultural significance and trade mark significance. While there can be little doubt that Nelson Mandela is one of the most recognised figures in modern history, the UKIPO concluded that the evidence filed did not establish reputation in MANDELA as a trade mark for the goods and services relied upon nor was there sufficient evidence to show that the applicant's actions crossed the line into bad faith.