Kenya Trade Marks Bill 2015 Published for Public Comment

kenya industrial property institute kipi website notice trademarks 2015

Mr. Sylvance Sange, the Acting Managing Director of the Kenya Industrial Property Institute (KIPI) has published the Trade Marks Bill 2015 for public comment.

KIPI notes that the Trade Marks Act, Cap 506 of the Laws of Kenya came into effect on 1st January 1957. Since then, the Act has undergone a number of amendments and was last comprehensively amended in 2002. In compliance with the Constitution of Kenya 2010 and in keeping with the current national and international trends in the field of intellectual property, KIPI now seeks to repeal the Act. To this end, KIPI has prepared Drafting Instructions to be forwarded to the Attorney General’s Office for the necessary action.

Members of the public and interested parties are invited to submit any written comments on this Bill to KIPI at info@kipi.go.ke on or before April 30th 2015.

A copy of the Bill is available here

Litigation Imminent in “Equitel” Trade Mark Dispute: Equitel Insurance Agency v. Equity Group Holdings Ltd

Equitel SIM

According to media reports here, Finserve Africa Limited, a subsidiary of the multi-billion shilling Equity Group Holdings Ltd has been threatened with court action by Equitel Insurance Agency Ltd over the use of the name “Equitel” in connection with its telecommunication network operated using the now controversial ‘thin SIM’ technology. It is reported that Equitel has issued Equity with a cease and desist notice in which the former terms as unlawful the use of its trade mark which includes the name “Equitel” by Equity. Therefore Equitel has reportedly demanded that Equity desist from using the trade mark, including withdrawal of all publicity and advertising materials that contain this word.

In reply to Equitel’s claims, it is reported that Equity’s counsel stated in a letter as follows:-

“Our client is the proprietor of Equity Insurance Agency registered as such in 2007, to provide insurance services to its customers. Therefore, registration of Equitel Insurance Agency was targeted to misrepresent to the public that it was offering our client’s insurance services (….) The mere fact that your client may have been the first to register the trade name does not override the common law protection of the name, goodwill and reputation amassed by our client over the years”

In this connection, it is reported that Equity accused Equitel of using insider knowledge to set up its operations, given that it was an account holder at the bank and had first-hand experience of the services Equity Insurance was offering and, therefore, sought association in the registration of its own business name.

This blogger will be keenly following this dispute in the event the matter is not settled amicably and ends up before the courts for determination.

ARIPO Roving Seminars 2015: Copyright and Industrial Property Rights in Kenya

ARIPO Roving Seminar 2015 Kenya Director-General Fernando Dos Santos ARIPO Chief Examiner Emmanuel Sackey KECOBO Director Marisella Ouma Victor Nzomo IP Kenya

As earlier advertised here, African Regional Intellectual Property Organization (ARIPO) successfully executed its on-going series of Region-wide “Roving Seminars” in Kenya with the first two days (Monday 16th and Tuesday 17th of March 2015) being devoted to copyright matters under the theme: “Copyright in the Digital Environment” and last two days (Thursday 19th and Friday 20th of March 2015) being devoted to industrial property matters under the theme: “Protection and Promotion of Patents, Trade Marks, Industrial Designs and Geographical Indications”.

In his opening remarks, ARIPO Director General Mr. Fernando Dos Santos brought to our attention the important role Kenya has played as a pioneer ARIPO member state. For those who may not know, when ARIPO was established, its first headquarters were hosted at the Attorney General’s Chambers (Sheria House) in Nairobi before later relocating to its present headquarters in Harare, Zimbabwe. Therefore the DG described coming to Kenya and visiting Sheria House as “coming home” since this was his first visit to Kenya since taking office as Director General in 2013.

For those who missed the Seminar, you may follow some of the conversations online on twitter using the hashtag: #ARIPOSeminar.

Here is a list of the presentations made during the four days of #ARIPOSeminar:

- Introduction to Intellectual Property – Concepts and Challenges Facing Developing Countries

- Role of ARIPO in implementing the IP Ecosystem: the case of copyright and related rights

- The implications of recent international developments in the copyright arena

- Overview of copyright in the digital environment

- ARIPO as a Regional Hub for the Development and Promotion of Intellectual Property System in Africa

- Developments in Kenya IP Legal Framework for the Administration of Industrial Property Rights

- International Treaties on Industrial Property (PCT, Madrid and Hague Systems)

- Filing for Trademarks including Timelines and Fees in Kenya

- Trademarks and Industrial Designs as Tools for Adding Value to Products and Services

- Enforcement of Intellectual Property Rights in ARIPO Member States

- Making Better Use of Technological Information including Patents to Promote Innovation

- Managing the IP Portfolio of an Organization Enterprise

- Development of Regional and National Geographical Indications Protection Systems: Experiences from ARIPO and Kenya

- Development of a Regional System for the Protection of New Varieties of Plants (Draft ARIPO Protocol)

- Filing for Patents, Utility Models and Industrial Designs including Timelines and Fees in Kenya

- Filing Procedures and Fee Structure under the ARIPO Harare and Banjul Protocols

- The New ARIPO Online Industrial Property Management and E-Services Systems

Readers are welcome to write in and request electronic copies of any of the above powerpoint presentations.

This blogger applauds ARIPO for introducing this new mode of engagement with its nineteen (19) African members and wishes the Organization great success in fulfilling its mandate.

The ‘Multibix’ Trade Mark Dispute: High Court Ruling in Weetabix Ltd v. Manji Food Industries Ltd

Weetabix Ltd Manji Food Industries Ltd Shopping Trade Mark IP KENYA

This blogger has recently received a copy of the High Court’s recent ruling in the case of Weetabix Ltd v. Manji Food Industries Ltd HCCC No. 53 of 2013. As previously discussed in our blogpost here, Weetabix had approached the High Court seeking a temporary injunction restraining Manji Foods, the makers and distributors of Multibix from engaging in any commercial dealings with the product Multibix. According to Weetabix, the application became necessary because despite the ruling of the Registrar of Trade Marks (as highlighted here), Manji Foods has continued to distribute and sell the Multibix product causing damages as result of trade mark infringement. The court found for Weetabix allowing its application for injunction.

A copy of the ruling is available here.

At the core of the ruling by Ogolla J was an unequivocal affirmation of the decision by the Registrar of Trade Marks from In Re TMA No. 66428 “MULTIBIX” Opposition by Weetabix Ltd 31 August 2012 where Weetabix had successfully brought opposition proceedings against the registration of the trade mark “MULTIBIX” in respect of “biscuits” (in class 30) on the grounds of likelihood of confusion contrary to Section 14 of the Trade Marks Act and that “WEETABIX” was a well-known mark under Section 15A of the Act.

According to the learned judge:

“The ideal position would have been for the Defendant [Manji Foods] to cease all actions of trading in the mark Multibix immediately the said Ruling [by the Registrar] was delivered…the Defendant, in defiance of the said Registrar’s Ruling, continued to engage in business as usual. (….) The Registrar’s findings are the findings of a competent tribunal which remains unchallenged.”

A recent commentary by Spoor Fisher (available here) dismisses the High Court’s ruling as “a bit odd”, “unusual”, “clumsy” and that the court’s reasoning contains “apparent flaws”. With respect, this blogger finds Spoor Fisher’s commentary to be misleading and misinformed. While this blogger agrees that the High Court judge did provide clear reasoning on what constitutes a well-known trade mark, it is clear from the ruling that the High Court wholly adopted the findings of the Registrar in the opposition proceedings on the well-known status of “WEETABIX”.

In its commentary, Spoor states:

“An injunction was therefore granted, which is not too controversial. However it is unusual that a company is expected to stop using a trade mark simply because its application is refused. Can it not hope that a High Court judge might find differently to a trade mark hearing officer as it undoubtedly is entitled to do. In short, the court erred in finding that the Registrar’s ruling (in the opposition matter) was binding on the court.”

In reply, this blogger submits that Weetabix were entitled to enjoy the benefits of the Ruling by the Registrar, which includes a clear statement that the Multibix mark was infringing and thus in effect barring Manji Foods from trading in Multibix products. As the learned judge rightly notes, there was no stay of the Registrar’s decision and even though Manji had filed an an application to file an appeal out of time, this application had not been prosecuted.

It is trite law that the High Court is not bound by decisions of tribunals or lower courts therefore any party is entitled to hope that the High Court will reverse the decision of the Registrar. In the present case it is abundantly clear that the High court in relying on the opinion of the Trade marks Expert in the Country in rendering its decision did in no way make the “finding that the Registrar’s ruling (in the opposition matter) was binding on the court” as wrongly understood by Spoor.
Furthermore, it is important to note that this ruling was only with respect to Weetabix’s application for temporary injunctive orders and therefore it is not the final judgment of the court on this matter as falsely proclaimed by Spoor.

Judgment by Court of Appeal Sets Stage for Opposition of “SONY HOLDINGS” Trade Marks

sony-holdings-tm

“Like the High Court, we are satisfied that the Registrar judicially and fairly exercised his discretion to extend time. He properly directed himself on the substance of the notice of oppsition so that the matter in controversy may be heard and determined with the benefit of evidence. The alternative, suggested by the appellant, namely to terminate the opposition proceedings on a technical procedural point, would be ineffectual, as the registration of the appellant’s trade marks would open new front of challenge and dispute between the same parties, on essentially the same issue.
We find no merit in this appeal. It is dismissed with costs.” – Githinji, Mwera & Ouko, JJ.A in the Judgment of the Court in Sony Holdings Ltd v Registrar of Trade Marks & another [2015] eKLR.

This blogger has come across the recently reported judgment of the Court of Appeal in the case of Sony Holdings Ltd v Registrar of Trade Marks & another [2015] eKLR. As previously discussed here, the so-called Sony case was filed in the High Court to challenge whether the Registrar of Trade Marks acted within his powers in extending time within which a notice of opposition to the registration of two trade marks could be lodged. Disatisfied with the decision of the High Court on this matter, Sony Holdings appealed to the Court of Appeal which has now delivered the present judgment. In its judgment, the appellate court upheld the decision of the High Court and found that the Registrar of Trade Marks had the discretion to extend time periods under Section 21(2) the Trade Marks Act read with Rules 46 and 102 of the Trade Marks Rules.

A copy of the judgment is available here.

In advancing the argument of legitimate expectation, Sony Holdings unsuccessfully sought to have the Court of Appeal stretch this doctrine to hold that “Law is a promise, and a person legitimately expects to enjoy the guarantees of the law as and when s/he fulfills his/her legal obligation”. More fundamentally, Sony Holdings failed to convince the court that the discretion of the Registrar of Trademarks is not unfettered and that it is in fact circumscribed. On this part, the court rightly found as follows:

“While we have no doubt that under Rule 46 the time within which a notice of opposition may be given is sixty days from the date of advertisement, we hold the view that Rule 102, providing for the Registrar’s general power for enlargement of time under the Act, gives him unfettered powers. He can extend the time for doing any act under the Rules on such conditions as he may himself specify.

Although sub-rules (2) and (3) respectively provide that he may not extend time expressly provided in the Act, except those prescribed under section 25 (6) and (7) or extend a time limit for a period in excess of ninety (90) days, the use of the word “may” in both sub-sections does suggest that for good reason the Registrar has discretionary powers to extend time beyond sixty (60) or even ninety (90) days. That is why, in our view, sub-rule (6) of Rule 102 provides that an application for extension of time may be made even though the time allowed has already expired. The word “may” runs through section 21 (2) of the Act, Rules 46 and 102 and indeed in the entire Act in describing the powers and duties of the Registrar.”

sony-holdings-tm-1

It appears that the odds were heavily stacked against Sony Holdings which was unable to persuade the courts to overrule the separation of powers doctrine and intervene, through the mechanism of judicial review. Sony Holdings’ arguments which were largely technical appear not to have been backed by sufficient evidence to demonstrate that the Registrar of Trade Marks exercised his statutory functions in a manner consistent with the “three I’s” (illegality, irrationally and impropriety).

With this definitive judgment by the Court of Appeal, this blogger reckons that a further appeal to the apex court by Sony Holdings is unlikely. Therefore this judgment paves way for Sony Corporation to argue out the merits of its opposition of the Sony Holdings trade mark applications as pictured above.

A Look at the East African Community Creative and Cultural Industries Bill, 2015

East African Community Flags Burundi Kenya Rwanda Tanzania Uganda

“Although the East African region has the potential to develop new areas of wealth and employment as it is rich in cultural heritage and inexhaustible pool of talents, the region still remains a marginal played in the global market. While the East African Community (EAC) Partner States produce world-renowned artists, still the contribution of creative and cultural industries to our economy has remained insignificant. Likewise, due to lack of incentives, financial, educational, infrastructure and technology support from the EAC Partner States and the business community, our local creative industries are not yet fully developed.

Nurturing and exploitation of creative and cultural industries in the EAC through an effective regional legal framework can contribute to job creation, income generation and poverty alleviation.” – Hon. Dr. James Ndahiro (Rwanda), Member – East African Legislative Assembly.

On 27th January 2015, the EAC Creative and Cultural Industries Bill, 2015 was read for the first time and committed to the Committee of General Purpose during the Fourth Meeting of the 3rd Session of the 3rd Assembly plenary session held in Arusha, Tanzania.

Between the 9th and 10th of March 2015, this Committee has been covering all EAC Partner States holding public hearings to sensitise stakeholders on the Bill and receive views and contributions from them to be incorporated into the Bill.

From the outset, it is clear that the aim of the Bill is to promote creative and cultural industries in the East African Community. The Bill defines “creative and cultural industries” to mean “the industries that originate from creativity or accumulation of culture which through the formation and application of intellectual properties, possess potential capacities to create wealth and job opportunities, enhance the citizen’s capacity for arts, and elevate the citizens’ living environment in the areas specified in the Schedule.”

The Schedule of the Bill lists several industries as falling part of the creative and cultural industries, including: “visual art industry, music and performance art industry, cultural assets application and exhibition and performance facility industry, handicrafts industry, film industry, radio and television broadcast industry, publication industry, advertisement industry, product design industry, visual communication design industry, designer fashion industry, architecture design industry, digital content industry, creativity living industry, popular music and cultural content industry, sports activities” among others as may be designated.

To achieve the above aim, the Bill seeks to establish the Creative and Cultural Industries Development Council that shall provide an environment conducive to the enhancement and stimulation of creativity and innovative endeavours among the citizens of the EAC.

A copy of the Bill is available here.

Making Caller Tunes of Person’s Voice Not Copyright Infringement: Case of Ssebagala v. MTN Uganda Ltd & Anor

This blogger has come across a recent judgment from the High Court in Uganda in the case of Ssebagala v. MTN (U) Ltd & Anor. In this case, Ssebagala the former Mayor of Kampala spoke to journalists who were waiting outside the precincts of Parliament. Ssebagala was being vetted by Uganda’s Parliamentary Appointments Committee following his nomination for appointment as a Cabinet Minister. During the question and answer (Q & A) session, Ssebegala is said to have responded to the journalists using his “characteristic style and skill which obviously generated a lot of merriment”. Ssebagala’s interaction with the press was publicly broadcast in Uganda as current news of public and political events. Thereafter SMS Media Ltd, the third party in the suit, adapted audiovisual recordings of Ssebagala into caller ring back tones (CRBTs) and offered these caller tunes to leading mobile network MTN Uganda for sale to the latter’s subscribers.

In a previous blogpost here we highlighted that Ssebagala filed suit in the Commercial Division of the High Court seeking two main orders: firstly a declaration that MTN’s use and/or sale of Ssebagala’s speeches/addresses as ring tones/caller tunes constitute an infringement of his copyright; and secondly a permanent injunction restraining MTN from further violation of the said copyright. Ssebagala also asked the court for an order of audit of all the proceeds received by MTN from the use of his said copyright and delivery up of the same to him. Ssebagala asked the court to award him general damages, exemplary damages, and aggravated damages, costs of the suit and interest on the claims.

In its judgment, the court found against Ssebagala stating that he cannot claim authorship for the purposes of the Ugandan Copyright and Neighbouring Rights Act and therefore no economic or moral rights allegedly belonging to Ssebagala had been infringed by MTN and SMS Media. From the judgment, it is clear that counsel for Ssebegala gravely erred in claiming Ssebagala was author/co-author of the ringtones and that the copyright in the suit ringtones vests in him.

Copyright aside, the learned judge also appears to suggest that Ssebagala’s cause of action ought to have been based on image rights using the tort of appropriation of his personality:

“In this case (….) Ssebagala (the Plaintiff) made his utterances in public and meant them to be communicated or disseminated to members of the public. He did not give any restrictions as to how that information was supposed to be used by the people to whom he freely gave his answers. He has not come to this court claiming a tort of appropriation of his personality but claims inter-alia unjust enrichment and copyright infringement. Because he enjoys no copyright in the circumstances, the action for copyright infringement has to fail and is hereby dismissed.”

A copy of the judgment is available here.