Background

In 2023, an Austrian company, Johann Radauer GmbH, applied to register the trade mark POWER MANDELA in Class 32 (covering beverages, including soft drinks and energy drinks) in Rwanda under application no. RW/T/2023/260. The application was examined, approved for advertisement, and subsequently published in the September 2023 edition of the Rwanda Industrial Property Journal.

The Trustees for the time being of the Nelson Mandela Foundation Trust, a non-profit organisation founded in 1999 by the late Nelson Mandela to promote his vision, values, and legacy, filed a Notice of Opposition to the application in December 2023. The matter raised important questions about the protection of well-known trade marks, bad faith applications, and unfair competition under Rwandan law and international intellectual property treaties.

The Grounds of Opposition

The opposition was grounded on three principal arguments:

1. That the MANDELA trade mark is a well-known mark entitled to protection in Rwanda under the IP Law, the TRIPS Agreement, the Paris Convention, and the WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks (“WIPO Joint Recommendation”);
2. That the application was filed in bad faith contrary to Article 139 of the IP Law No. 31 of 26/10/2009 on the Protection of Intellectual Property (“the IP Law”); and
3. That the Opposed trade mark constitutes an act of unfair competition under Articles 180 and 183 of the IP Law.

1. Is MANDELA a Well-Known Trade Mark Entitled to Protection in Rwanda?

In its Counter-Statement, the Applicant relied strictly on a literal application of Articles 141 and 150 of the IP Law, which state that exclusive rights are acquired solely through local registration, to argue that the Opponent possessed no standing in Class 32.  However, the Opponent contended that this argument does not fully align with Rwanda’s obligations under the international framework in the protection of well-known trade marks.

The International Framework

Rwanda has been a signatory to the Paris Convention for the Protection of Industrial Property since 1^st March 1984, and acceded to the Agreement establishing the World Trade Organisation (and with it, the TRIPS Agreement) on 22^nd May 1996. Critically, Article 290 of the IP Law itself provides that in the event of a conflict between the IP Law and any international intellectual property treaty to which Rwanda is party, the provisions of the international treaty shall prevail.

Under Article 16(3) of the TRIPS Agreement, Article 6bis of the Paris Convention applies, mutatis mutandis, to goods or services which are not similar to those in respect of which a well-known trade mark is registered, provided that use of the conflicting trade mark would indicate a connection with the well-known mark’s owner and that the owner’s interests are likely to be damaged. This provision directly addresses and negates the Applicant’s Class 32 registration argument.

Further, the WIPO Joint Recommendation expressly provides under Article 2(3)(a)(i) that a Member State shall not require, as a condition for determining whether a mark is well-known, that the mark has been used in, registered in, or that an application for registration has been filed in that Member State.

Evidence of Well-Known Status

The evidence presented by the Opponent was extensive and compelling, when assessed against the criteria in the WIPO Joint Recommendation. Demonstrating an extraordinary global footprint, the Opponent adduced evidence of continuous usage since 1999 across 135 countries, supported by 163 institutional donors, and documented over 670,000 unique web visitors from Europe alone between 2019 and 2023. Locally, the recognition in Rwanda is deeply entrenched: the Mandela Village in Nyamata, Eastern Province, commemorates his historic 1994 visit; Nelson Mandela International Day is celebrated annually within Rwandan state institutions, including a high-profile 2022 human rights commemoration at Nyarugenge Prison; and the 2022 Netflix series ‘Live to Lead’ reached an expanding domestic audience.

• Was the Application Filed in Bad Faith?

Article 139 of the IP Law provides that a mark cannot be validly registered if the application was made in bad faith. The evidence in this case made the bad faith argument unusually compelling.

In December 2022, the Applicant contacted the Opponent seeking permission to develop a commercial product incorporating the MANDELA name in collaboration with the Opponent. A meeting followed in January 2023, at which the Applicant revealed that its proposed product was an energy drink bearing the name “MANDELA” and expressed a desire to share profits with the Opponent. The Applicant presented a business card displaying the Opposed trade mark and referenced the website www.power-mandela.com.

At that meeting, the Opponent unequivocally communicated the late Mandela’s express wishes: that the MANDELA name should not be commercialised; that neither MANDELA nor NELSON MANDELA should be licensed for commercial use to third parties; and that the Opponent, as custodian of the Mandela legacy, would not endorse commercial projects without direct involvement. The Opponent expressly declined to authorise the energy drink project. The Applicant gave undertakings at the meeting that the sample product and business card would not be made public, and that it would not exploit the Opponent’s intellectual property without authorisation.

Notwithstanding these unequivocal assurances, the Applicant subsequently filed the Opposed trade mark in various jurisdictions, including Rwanda.

Crucially, a WHOIS registry search revealed that the Applicant pre-registered the domain name www.power-mandela.com  on 28^th November 2022. This action occurred prior to its initial outreach to the Foundation on 13^th December 2022, proving that the Applicant had already commercialised the legacy mark in its corporate infrastructure before initiating ostensible collaboration overtures.

The Legal Standard

The applicable standard for assessing bad faith requires an overall assessment of all relevant circumstances, including the Applicant’s intention at the time of filing, assessed by reference to the objective facts. As articulated in Sky Ltd v SkyKick UK Ltd [2021] EWCA Civ 1121, the extent of the reputation enjoyed by the existing mark at the time of filing is directly relevant to the legitimacy of the Applicant’s intention in seeking wider protection for a similar sign.

Applied to the facts here, the inference was irresistible. The Applicant was plainly aware of the Opponent’s trade mark and its global significance. It sought authorisation from the Opponent, thereby acknowledging it was not the true proprietor of the mark. It was refused that authorisation. It gave undertakings not to proceed. It then filed the application regardless. This course of conduct is quintessential bad faith.

• Does the Opposed Mark Constitute Unfair Competition?

Article 134(2) of the IP Law provides that a trade mark can only be validly registered if it is distinctive, not confusing, and not misleading or deceptive. The Opposed mark POWER MANDELA wholly incorporates the word MANDELA as its dominant and distinctive element, a word that carries such iconic resonance, particularly in Africa, that consumers encountering the mark would automatically associate it with the late Nelson Mandela and, by extension, the Opponent. The word “Power” lacks distinctiveness and does nothing to differentiate the Opposed mark; if anything, it amplifies the allusion to Mandela and his legacy.

Beyond confusion, Article 183 of the IP Law extends protection to acts that damage, or are likely to damage, the goodwill or reputation of another’s enterprise, regardless of whether those acts cause confusion. Dilution of goodwill or reputation is defined to include the lessening of the distinctive character or advertising value of a well-known mark or the presentation associated with a celebrity. Allowing the MANDELA name to be used for an energy drink product, without the Opponent’s oversight or quality control, poses a direct and material threat to the iconic reputation painstakingly built and carefully protected by the Opponent over decades. This is precisely the mischief Articles 180 and 183 are designed to prevent.

• A Procedural Note: The Further Counter-Statement

The proceedings also raised a noteworthy procedural issue. Following the filing of the Applicant’s first counter-statement in January 2024, a further counter-statement was subsequently filed, attaching among other documents a purported licence agreement dated April 2019. We objected to the admission of this further counter-statement in the strongest terms. The Applicant had no procedural entitlement to file a second counter-statement. The late introduction of this material, timed precisely when the Opponent had just finalised its substantive reply, was procedurally irregular and prejudicial. We reserved our client’s rights accordingly, requesting adequate time to respond if the further counter-statement were nonetheless admitted.

The Registrar’s Decision

On 18^th November 2025, the Office of the Registrar General of the Rwanda Development Board issued its Decision on the Opposition, ruling in favour of the Opponent. The application by Johann Radauer GmbH to register the trade mark “POWER MANDELA” in Class 32 was refused registration in the Intellectual Property Register.

The Registrar found that the application: (a) was filed in bad faith; (b) is likely to cause confusion and mislead consumers; (c) constitutes unfair competition; and (d) infringes on the protection of a well-known mark. This outcome validated each of the substantive grounds advanced by the Opponent across the opposition proceedings.

The decision marks a significant precedent for the protection of well-known personality and legacy marks in Rwanda, affirming that international treaty obligations take precedence over any gaps in local registration, and that a clear course of bad-faith pre-filing conduct will be determinative.

Key Takeaways

This matter illustrates several important principles for brand owners and practitioners operating in Rwanda and across the East African region:

1. Well-known marks do not require local registration to attract protection. Rwanda’s treaty obligations under the TRIPS Agreement and the Paris Convention, reinforced by the supremacy clause in Article 290 of the IP Law, provide a robust framework for protecting internationally well-known marks even in the absence of a local registration in the relevant class.

1. Pre-filing conduct is highly probative of bad faith. Where an applicant has previously approached the trade mark owner for authorisation, been refused, and proceeded to file regardless, that chronology creates powerful evidence of bad faith which is difficult to overcome.

1. The protection of legacy and personality-based trade marks requires vigilance. The MANDELA name is one of the most recognisable in the world. Those who seek to exploit that recognition for commercial gain, particularly without the consent of the authorised custodian of that legacy, face significant legal exposure under multiple provisions of Rwanda’s IP Law and the international framework.

1. Class differences do not insulate an applicant from well-known mark claims. The Applicant’s argument that its mark in Class 32 could not conflict with the Opponent’s activities in Class 45 ignored the express cross-class protection afforded to well-known marks under the TRIPS Agreement. This is a common misunderstanding that practitioners should be alert to.