Mandela banks victory in gold coin dispute

In Mandela v Investgold CC (Case 32439/04, December 17 2004), the Transvaal Provincial Division of the High Court has upheld former South African president Nelson Mandela's application for injunctive relief to restrain the defendant, Investgold CC, from importing into South Africa gold coins bearing his name and famous profile.

Mandela, through the Nelson Mandela Foundation (NMF), claims trademark rights in various elements of his name and image including MANDELA, NELSON MANDELA, MADIBA (the name by which he is fondly known throughout South Africa), his image, ROLIHLAHLA (his middle name) and also 46664 (his cell number while incarcerated on Robben Island). Various trademark applications have been filed to protect these rights and Mandela also owns, under South African common law, personality rights in his name and image.

An earlier commercial arrangement between NMF and Investgold relating to the importation into South Africa of gold coins bearing the name Nelson Mandela and his profile led to a dispute. The parties then entered into a settlement agreement in terms of which Investgold undertook, among other things, not to import into South Africa coins bearing Mandela's name or profile without NMF's specific consent (which would not be unreasonably withheld).

In October 2004 Investgold informed NMF that it intended to import gold coins from the United Kingdom bearing the Mandela name and image, and asked for consent to do so. Mandela and the NMF withheld their consent because of concerns regarding:

• the quality of the coins;
  
  
• the question as to whether Investgold had the required permission from the South African Reserve Bank to import the goods; and
  
  
• the proposed pricing of the coins (which was considered too low).

Before these three issues (quality, legality and pricing) could be resolved satisfactorily between the parties, Investgold decided to go ahead with the importation. Mandela and NMF therefore filed an urgent application for injunctive relief with the High Court.

The main issue before the court was whether Mandela and NMF had unreasonably withheld their consent to the intended importation and sale of the gold coins in issue based on the three reasons mentioned. The onus of showing unreasonableness rested on Investgold.

On the quality issue, Mandela and NMF had requested a sample coin from Investgold to satisfy themselves regarding quality. This was not forthcoming. Secondly, to the extent that Reserve Bank approval (through Investgold's commercial bank) may have been granted, this only related to the importation of "currency coins" which, the court held, the coins in issue were not. Finally, the court held that Mandela's and NMF's concerns about the low pricing were not unreasonable.

In the result, the court found that the refusal of consent was reasonable and Investgold was interdicted from marketing, advertising, offering for sale or otherwise dealing in coins or medallions bearing the names President Mandela, Mandela or Nelson Mandela or the slogan 'a better life for all' together with, or without, an image (purported or actual) of Mandela. Costs of the suit were also awarded against Investgold.

Chris Job, Adams & Adams, Pretoria