Establishing Copyright Infringement: High Court Ruling in Nonny Gathoni v. Samantha’s Bridal Wedding Show Case

This blogger has come across a recent ruling by the High Court in Nonny Gathoni Njenga & anor v. Catherine Masitsa & 2 ors Civil Case No. 490 of 2013. In this case, the plaintiffs (Nonny Gathoni and Jane Odewale) applied to the High Court for orders of temporary injunction restraining the Defendants (Catherine Masitsa, Standard Group Ltd and Bauhaus Ltd) from infringing in any way on the plaintiff’s rights under copyright in the literary work registered as “Weddings with Nonny Gathoni” and later televised as “The Baileys Wedding Show with Noni Gathoni”. In particular, the plaintiff sought to have the court restrain the defendants from reproducing, adapting, communicating to the public or broadcasting the whole work or a substantial part thereof either in its original form or in any form recognisably derived from the original literary work.

A copy of the ruling is available here.

According to the learned High Court Judge Ogolla J the main issue for determination is whether the Defendants have infringed on the Plaintiffs’ literary work (as registered at KECOBO and evidenced by a Certificate of Registration issued by KECOBO and presented in court). The learned judge rightly singles out the core contention of the plaintiffs which is that although both parties had their own wedding show, the defendants changed the previous running order of their show by allegedly copying the running order expressed by the plaintiffs in the literary work “Weddings with Noni Gathoni”. The court ultimately finds in favour of the plaintiffs and allowed the orders sought for temporary injunction.

This blogger respectfully submits that the court erred in making this ruling. The point of departure from the court’s ruling is on the issue of whether the plaintiffs can be said to have established that their literary work was infringed by the defendants merely by showing that there was a degree of similarity in the running orders of the two weddings shows.

In the ruling, the court seems to suggest that the infringement of the plaintiff’s copyright work had been established for the following reasons:

1. The plaintiffs produced side by side comparison clips of the plaintiffs’ and defendants’ wedding shows to demonstrate the apparent similarities in the set format or running order. Some may recall that in an earlier ruling in the same case reported here as Nonny Gathoni Njenga & Another v. Catherine Masitsa & Another [2014] eKLR, the plaintiffs sought to produce three (3) DVDs “taken not from one show but a series of shows over a period of time”. In reply, the defendants questioned the admissibility of the DVDs arguing that they were secured illegally and that they “constituted an infringement of property rights.”

The court then ruled in favour of the defendants stating thus:

“In light of the above analysis and having already stated above that the DVDs attached by the Plaintiffs are not accompanied by a Certificate as required under the evidence Act, it therefore follows that the said DVDs are inadmissible as evidence.
However, in the interest of justice, it is my view that the Plaintiffs are at liberty to produce such certificate for the admissibility of the said evidence. When that is done, the Court will be able to examine the evidence and evaluate the probative value of the said DVDs as well as the authenticity. The Respondent has alleged that the DVDs were obtained illegally, however that cannot be ascertained at this stage until the Certificate is filed and the Court is able to determine the source of the DVDs.”

2. The plaintiffs and the defendants had a common denominator: David Kiprono. According to evidence provided by the plaintiffs, Kiprono of JayDay Magic Studios Production Company was retained by the plaintiffs to provide certain services including the production of the pilot for the Weddings with Nonny Gathoni show. Thereafter Kiprono is alleged to have approached the Defendants and pitched to them the Plaintiffs’ concept for a wedding show. In their submissions, the Defendants did not deny knowledge of Kiprono but instead produced a letter by Kiprono addressed to Kenya Copyright Board (KECOBO) disputing the registration by the plaintiffs of the literary work in question.

Respectfully, this blogger submits that at best this ruling is unprecedented as it has now extended copyright protection to television formats and at worst this ruling may have a chilling effect on creative expression in the audiovisual sector. In particular, this blogger contends that the test for infringement within copyright law relates to works within a similar category and not works in different categories as is the case in the present matter.

KIPI Registrar Rules to Expunge “KENYA BOYS CHOIR” Trade Mark

Furahia Album Cover Kenyan Boys Choir dot com

In the spirit of this year’s music-themed World IP Day, this blogger has opted to share a recent ruling: In the Matter of Trade Mark No. KE/T/2010/67586 “KENYA BOYS CHOIR” (WORDS) in Classes 16 and 41 in the Name of Joseph Muyale Inzai and Expungement Proceedings Thereto by Kenyan Boys Choir delivered by the Assistant Registrar of Trade Marks at the Kenya Industrial Property Institute (KIPI).

In 2010, one Joseph Muyale Inzai filed an application to register his trade mark “KENYA BOYS CHOIR” (WORDS) before the Registrar of Trade Marks in classes 16 and 41 of the Nice Classification. The mark was approved, published and thereafter entered in the Register of Trade Marks in 2010. In the same year, Members of a choir known as Kenyan Boys Choir obtained registration of their business names “THE KENYAN BOYS CHOIR” and “THE BOYS CHOIR OF KENYA” under the Registration of Business Names Act.
These Members of the Kenyan Boys Choir filed an application for expungement of the mark claiming that they were aggrieved by the entry of the mark for various reasons including that they were the true owners of the mark: “KENYAN BOYS CHOIR” which was virtually identical to the mark in question: “KENYA BOYS CHOIR”.

According to the evidence presented, the Kenyan Boys Choir was started in 1997 as the Aquinas High School Choir (an all-boys high school choir) and was later changed to KENYAN BOYS CHOIR with Inzai engaged as the Choir Master. Since this change of the Choir name, the members of the Choir claim to have created immense goodwill throughout Kenya and abroad especially in the United States of America where the choir and its members have a huge following and fan base.

It was therefore the contention of the Choir members that Inzai had no legal or valid claim to the mark and that by registering the mark “KENYA BOYS CHOIR” he was seeking to ride on and taking unfair advantage of the goodwill created by the members of the choir collectively. In this connection, the choir members claimed that the registered mark is capable of causing confusion or deception among members of the public and was fraudulently intended to prevent the bona fide use and registration of the choir members’ mark “KENYAN BOYS CHOIR” which comprises the latter’s registered business names.
In light of the above, the choir members sought to have the Register of Trade Marks rectified by having Inzai’s trade mark no. KE/T/2010/67586 “KENYA BOYS CHOIR” (WORDS) expunged from the Register under the provisions of section 35(1) of the Trade Marks Act.

The Registrar ruled in favour of the Choir members in addition to an award of costs. The Registrar found that Inzai had no valid and legal claim to the mark for the reason that his ownership of the mark was not sufficiently substianted as required by law. Secondly the Registrar found that the choir members qualified as aggrieved persons under the provisions of section 35 of the Act. In this regard, the Registrar rightly notes as follows:

“The law of trade marks allows a person who did not get an opportunity to oppose registration of a mark to make an application to rectify the Register. It is for this purpose that the provisions of section 35 were included in the Trade Marks Act. This is the opportunity that the Applicants herein are appropriately utilising.”

A copy of the ruling by the Registrar is available here.

ARIPO Swakopmund Protocol on Traditional Knowledge and Expressions of Folklore Enters into Force in May 2015

children-circle

As many readers may recall, the Member States of the African Regional Intellectual Property Organization (ARIPO) adopted the Swakopmund Protocol on the protection of traditional knowledge and expressions of folklore on August 9, 2010 at Swakopmund in the Republic of Namibia. Section 27 of the Protocol provides that it shall come into force three (3) months after six (6) states have deposited their instruments of ratification or accession with the Government of the Republic of Zimbabwe.

Since the adoption of the Protocol, the following five (5) states have deposited their instruments of ratification or accession: Botswana, Zimbabwe, The Gambia, Rwanda and Malawi. The sixth and final ratification was deposited (fittingly one might add) by Namibia on February 11, 2015. Therefore, the Swakopmund Protocol shall enter into force on May 11, 2015.

According to ARIPO, The entry into force of the Swakopmund Protocol will have the following effect:

– It will enable the knowledge holders and local communities in the Member States to register trans-boundary traditional knowledge and expressions of folklore at ARIPO;

– The knowledge holders and local communities Member States will also be able to submit for record purposes traditional knowledge and expressions of folklore in their territories. This can be done through the national competent authority;

– The knowledge holders and local communities Member States will be able to license their traditional knowledge and expressions of folklore lodged at ARIPO and obtain benefits arising from the commercial use of such knowledge and folklore and obtain fees from such licenses;

– The knowledge holders and local communities in the Member States will be able to use the alternative dispute settlement procedures at ARIPO to settle disputes arising from traditional knowledge and expressions of folklore shared by different communities across national boundaries as the need arise;

– It will enable ARIPO to establish databases on codified and non-codified traditional knowledge and expressions of folklore. The information in the databases will only be used upon prior informed consent from the knowledge holders. The consultation of the databases will also generate income for the member states.

A copy of the ARIPO Swakopmund Protocol is available here.

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.