“Share A Coke” Campaign in Kenya: Intellectual Property Risk or Marketing Masterstroke?

Share a Coke with IPKenya

Ever since the “Share a Coke” campaign kicked off in Kenya earlier this month, thirsty fans countrywide have been clamouring to find their names on bottles of Coca-Cola. Some have struck gold, while others have left the store empty-handed. As many may already know, Coca Cola’s hugely successful international promotion “Share A Coke” originally started in Australia in 2011 and has since been rolling out around the world, making its African premiere in South Africa towards the end of 2013. This promotion, targetted mainly at teens and millennials, is intended to allow people to take the Coca-Cola script and replace it with their name on a bottle or can of the well-known beverage. For those with less popular or rare names, the digital version of the “Share a Coke” promotion allows users to create a virtual can with their names which is generated in .png format and available for download and social media sharing.

From an intellectual property (IP) perspective, this ‘de-branding’ campaign by Coca Cola is an eye-opener. It is no secret that the Coca-Cola Company has spent billions of dollars registering, protecting and enforcing its IP rights all over the world. For years, “Coca-Cola”, “Coke”, the Contour Bottle Design and the Dynamic Ribbon Device have been registered trademarks of The Coca-Cola Company. Having gone to such lengths to secure its IP rights, the Coca-Cola Company suddenly ditches the iconic “Coca-Cola” name from its bottles and allows the printing of names and other words on its products?!
Clearly, the Sales and Marketing guys in the room overpowered the Legal types when the idea for this ‘de-branding’ campaign was pitched and approved. While it is hard for an IP lawyer to quantify the risks of free-riding, diminishing distinctiveness, dilution and other harm to the Company’s trade marks as a result of “Share A Coke” campaign, the Sales and Marketing guys will have no problem showing how the campaign has boosted sales, provided the Company with enormous amounts of user-generated promotional content and driven traffic to the Company’s web and social media platforms.

This blogger recently visited Kenya’s “Share A Coke” website and created a virtual can, which is pictured above and available online here: https://ke.shareacokeafrica.com/can/Ipkenya. However, when one looks at the Terms of Use on the site available here, there are two IP-related issues which appear not to have been addressed:

1. What happens when a user creates a virtual can which contains a name which is a third party’s IP rights? The Terms of Use on the site ought to clearly prohibit the use of such names otherwise it may end up being held liable. In this regard, Coca-Cola ought to exercise its best discretion in determining which names may be infringing on third party IP rights.

2. What happens when a user makes commercial use of a virtual can without regard to Coca Cola’s IP rights? The Terms of Use ought to clearly state that the cans are for personal use only, including sharing on social media sites. Additionally, the Terms ought to prohibit any selling of the virtual can or the image on the COKE can. More importantly, the Terms should be explicit that the use of the site to generate a virtual can does not have the effect of granting rights in any of the intellectual property on the COKE bottles and cans, including the rendering of the names.

Finally, this blogger would invite readers to share any IP-related commentaries and articles on the “Share A Coke” campaign.

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Kenya’s Leading IP Professionals According to 2015 Edition of World Trademark Review 1000

wtr1000logo

“As more and more companies look to Africa for strategic growth, and as intellectual property (IP) becomes increasingly important to the continent’s economic agenda, trade mark activity in Kenya – the gateway to the East African market – has flourished.” – World Trademark Review 1000 – The World’s Leading Trademark Professionals.

In a previous blogpost titled “Fading Giants and Rising Stars: Opinion on Performance of Intellectual Property Law Firms in Kenya”, we considered some eleven Kenyan law firms known to have established IP practices, namely Kaplan & Stratton Advocates (K&S), Hamilton Harrison and Mathews Oraro Advocates (HHM Oraro), Iseme Kamau & Maema Advocates (IKM), Ndungu Njoroge & Kwach Advocates (NNK), Coulson Harney Advocates (CH), Daly & Figgis Advocates (D&F), Gichachi & Company Advocates (G&C), Simba & Simba Advocates (SS), J.K Muchae & Company Advocates (JKM), CFL Advocates (CFL) and Muriu Mungai & Company Advocates (MMC Africa). From the data presented, it was clear that the erstwhile dominance of K&S has receded with CH leading the way in trade mark prosecutions.

WTR 1000 2015 Firm Rankings kenya This week the 2015 World Trademark Review 1000 rankings were published online here. These WTR 1000 rankings confirm this blogger’s view to the effect that “heightened competition has raised standards even higher across the board.” Nine firms made it to this year’s WTR 1000 list ranked as follows: 1. CH (Gold); 2. IKM (Gold); 3. K&S (Gold); 4. CFL (Silver); 5. D&F (Silver); 6. HHM Oraro (Silver); 7. MMC Africa (Silver); 8. NN&K (Silver) and 9. S&S (Silver).

Among the three Gold Band firms in Kenya, CH’s review is the longest and most praiseworthy. The first two sentences alone of CH’s review contain a litany of superlatives like “unmatched”, “frontrunner” and “brightest” while CH’s Head of IP, John Syekei is described as “enormously popular throughout the region”. Syekei is once again ranked in the Gold Band of WTR 1000 Individuals behind IKM’s William Maema and K&S’s Peter Hime, who remains the top ranked IP professional in Kenya.

With its recent merger, HHM Oraro has become the largest firm in Kenya (17 Partners) and now has a whooping total of about ten (10) IP-savvy lawyers on its roster. This blogger expects HHM Oraro to attain the coveted Gold Band ranking if the merger is able to capitalise on its size and expertise to secure consistent big ticket commercial IP work. HHM Oraro’s swanky new website is available here.

It is impressive that CFL is ranked first among the Silver Band firms, which is truly a testament to the outstanding job being done by IP Partner Lorna Mbatia. Mbatia is credited with building “excellent relations with a raft of prominent US law firms, as well as top players in South Africa” which has made CFL “one of the fastest-growing trademark practices around.” According to WTR 1000 sources, Mbatia “has forged close ties with key personnel at different IP registries across East Africa; as a result, she is a great choice for clients with regional requirements.”

MMC Africa’s review stands out among all other ranked firms given its creative approach to IP practice. According to WTR 1000 sources, MMC has moved from being “reliant on instructions from foreign companies” to “fielding requests from an increased number of locals, thanks to its extensive non-billable work in educating domestic entities on the importance of trademark protection”. MMC’s IP Team is led by Nancy Karanu who is credited as an “effective motivator of her team” and “forward-thinking associate” Peter Kamero. Kudos to MMC’s Kamero who is the only Associate in the WTR 1000 Individuals rankings.

WTR 1000 2015 Individuals Rankings Kenya

This blogger wonders whether D&F, a newcomer on the WTR 1000 list, will survive the fierce competition among IP law practices. In this regard, many will recall the exodus of four key partners from D&F to CH in late 2014, including Njau Mukuha who is cited by the WTR 1000 as the Partner who “oversees the IP practice” at D&F. As D&F regroups, the three-way contest between indigenous firms NNK, G&C and SS will continue for the top spot among the Silver Band law firms.

Quick Thoughts on “Zindua Cafe”: Safaricom’s New Idea Submission Portal

zindua cafe safaricom homepage

This week, Safaricom launched “Zindua Cafe”, an idea submission web portal which allows registered users to submit ideas, applications or prototypes to Safaricom Limited, Kenya’s leading mobile network operator. Once these submissions are made to Safaricom, the telecommunication giant will review them internally and send either a ‘interested’ or a ‘regret’ response to the user. If Safaricom is ‘interested’ in any submission, the user will be offered a non-disclosure agreement and commmercial contract governing Safaricom’s intended implementation of the submission.

Having taken Zindua Cafe for a test-run, this blogger has a few thoughts on Safaricom’s new innovation portal:-

1. Intellectual property (IP) advice: Zindua Cafe is an excellent source for unsolicited legal advice on IP rights protection. The portal reads in part: “We strongly recommend that you patent your idea or get your IP in place”. The portal then explains the distinction between WIPO, KIPI and KECOBO and provides links to their respective websites. In the case of IP- protected submissions, the terms of use on the portal clearly state that users “irrevocably grant Safaricom the unrestricted right or license to use any idea or material [submitted] for the purpose of improving it, assessing its viability and determining its progression to the next stage within the Innovation Cycle”. In this regard, users of the portal agree that such use by Safaricom under the above license “shall not be deemed a violation of the user’s rights or the rights of any third party or give rise to any claim based on such alleged violation.”

2. Proof of IP protection: Zindua Cafe requires users to disclose whether submissions are protected as patents, trade marks or copyright in addition to providing the registration numbers of any certificates received from WIPO, KIPI and KECOBO. Copies of these certificates must also be submitted by users. This is a really smart way for Safaricom to establish the extent of IP protection involved in all submissions made on the portal. More importantly, Safaricom is in a better position to determine what steps would be necessary to exploit and/or acquire any intellectual property rights in the submissions.

zindua cafe safaricom brewing ideas

3. What’s the big idea?: As part of the submission process, Zindua Cafe requires users to provide a name for the idea/product/service/solution and select the applicable industry from a list including Agriculture, Education, Energy, Entertainment, Financial Services, Health, ICT, Manufacturing, Retail, Transport, among others. This section also requires the users to describe the idea/product/service/solution in 200 characters as well as explaining the need/problem that will be solved by the idea. Finally, users are required to itemise any similar or competing ideas/products/services/solutions already in the market and explain why their submissions are better! This is a really smart way for Safaricom to reduce on the amount of time spent in meetings with people pitching their ideas.

So, what do the users get in return after going through this rigourous 3-step submission process? Nothing. The terms and conditions of use on the portal ensure that Safaricom is fully protected from any claims arising from users and third parties while imposing several obligations on users including indemnity to Safaricom, assurance to Safaricom of IP ownership, among others.

Following the Vodacom “Please Call Me” case in South Africa and the numerous IP infringement cases involving Safaricom here in Kenya, this blogger applauds the move to introduce Zindua Cafe particularly because of the emphasis the portal places on protection of IP by its users prior to submitting their creative and innovative ideas to Safaricom.

What remains to be seen is whether this new portal for brewing ideas will deter future innovators and creators from bringing IP-related suits against Safaricom.

Registration of the “COFFEE KENYA” Certification Mark by the Government

MARK COFFEE KENYA

This blogger came across a recent media report stating that the government through the Ministry of Agriculture had successfully applied for registration of a mark of origin for Kenyan coffee at Kenya Industrial Property Institute (KIPI) and that a similar application was pending at World Intellectual Property Organization (WIPO).

The media report reads in part:

“Speaking yesterday at a preparatory meeting for the launch at Safari Park Hotel in Nairobi, Agriculture Cabinet Secretary Felix Koskei said the move was intended to increase visibility of local coffee in the domestic and international markets.

“The use of national mark of origin is another measure geared at improving visibility of Kenyan coffee in the domestic and international market,” Mr Koskei said.

Interim head of coffee directorate Grenville Melli said the mark is registered by Kenya Intellectual Property Institute and listing by World International Property Organisation is being considered.

So far, four companies have met the requirements to use the mark. They are C. Dormans, Kenya Nut Company, Kimanthi University of Technology and Super Gibs Ltd.”

Comment:

While scanty on the actual facts and details, the media report brings to light an interesting development. This blogger has confirmed that the Coffee Board of Kenya (CBK), a state corporation, has registered a Certification mark with the Registrar of Trade Marks at KIPI. A representation of the mark has been reproduced above. The Board also made an application to register the Certification Mark through WIPO’s Madrid System. They duly designated a number of countries including Australia, Japan, Republic of Korea, Switzerland, Iran, Sudan as well as the European Community but apparently the CBK did not attach the rules governing the use of the mark, as required for purposes of registration of a Certification Mark.

Upon examination of the application, all the designated countries, apart from Sudan, required the Board to forward the above rules within a certain period but the Board did not comply in time. The mark has therefore been deemed abandoned in all the countries designated apart from Sudan where it appears the mark has been registered. The Board has indicated that it will commence the process all over again.

A copy of the “COFFEE KENYA” Madrid application is available here.

Conflicts between Trade Marks Registry and Companies Registry: High Court Ruling in JamboPay v Jambo Express Limited Case

jambopay

“…whereas the Companies Act deals with the registration of companies and the responsible office is the Registrar of companies, the Act is often to find itself in conflict with the Trade Marks Act for as longs as there is no interlink between the two Acts of Parliament in practical sense. The conflict arises this way. For instance, a trademark is registered in respect of a class of services may conflict with a trade name of a company or company with similar activities or services. This lack of coordination between registering authorities has caused and will continue to cause extreme anxiety to consumers of the two services as well as judges who will be called upon to resolve those conflicts which would otherwise have been avoided were it not for the unhealthy state of institutional operations.” – Justice F. Gikonyo in Webtribe Limited T/A Jambopay v Jambo Express Limited [2014] eKLR at para 15

This blogger has come across a recent ruling by the High Court in the case of Webtribe Limited T/A Jambopay v Jambo Express Limited [2014] eKLR. In this case, Webtribe went to court claiming that Jambopay Express Limited infringes on Webtribe’s trademark Jambopay. In support of its claim, Webtribe produced a certificate of registration of trademark stating that the latter is the registered proprietor of the trade mark number 67127 consisting of the word ‘Jambopay’ registered in class 36 which is valid and subsisting from the 17th December, 2009. Jambopay Express Limited refuted Webtribe’s claim and produced Certificate of Incorporation number CPR/2012/86453 stating that the latter is a company that was registered on 11th October, 2012.

Although the main subject of the suit was the alleged infringement of a trade mark as well as a challenge to the registration of a company, the learned judge restricted his ruling to determining whether Webtribe had met the legal thresholds to be granted its request for a temporary injunction. The court found against Webtribe’s application and stated as follows:

“…a just determination of the issues herein especially of the plaintiff’s [Webtribe’s] right and alleged infringement of trademark does not just depend on the registration of the Trademark ‘Jambopay’ by the plaintiff but includes determination of other issues such as whether the protection provided to the name “Jambopay” by the trademark registered in favour of the Plaintiff overrides the protection of the name “Jambopay Express Limited” secured through the registration of the name as a company; and whether the defendant’s [Jambopay Express Limited’s] intent in registration of its trade name was to cause confusion among consumers and to capitalize in the Plaintiff’s goodwill in the online payment services market. Equally, the circumstance in which the Defendant Company was registered is in the center of this suit and whether it is an infringement as alleged. In light thereof, the material before the court is not sufficient for the Court to issue an injunction.”

As many readers may know, the Trade Marks Registry and the Companies Registry were previously both under the State Law Office. Therefore when registering a trade mark or reserving a company name, it was easier to close reference either the Companies Registry database or the Trade Marks Registry database to see if there were any conflicts. This has since changed. The Trade Marks Registry is under KIPI while the Companies Registry remains under the State Law Office. This legislative and institutional separation has brought about many challenges and disputes for people who are registering companies or trade marks in Kenya. As a result there has been an increase in “name-squatting” which impedes business and trade markets in the country. In aiming to resolve these disputes, aggrieved parties are forced to approach the High Court for determination which ends up being both expensive and time-consuming.

In an earlier case: Agility Logistics Limited & 2 Others v. Agility Logistics Kenya Limited, the court was faced to a similar dispute as in the present JamboPay case. In the Agility case, the court found that the plaintiff’s trademark protection overrides the defendant’s protection by the Companies Act. The court also found that the defendant’s registration at the Companies Registry was opportunistic. In arriving at this holding, the court in the Agility case stated as follows:-

“My take on the two pieces of legislation is that whereas the Companies Act governs registration of company names, the fact of registration per se does not extend protection to the name of the company itself as does the protection provided by a trademark.

Further, it is also pertinently clear that the protection extended by a trademark transcends the face value of a name and inheres in the name a distinctiveness that is associated with the reputation and goodwill that the proprietor of the mark has invested and earned through creation of value, quality and trust. So much so that a customer or user of the service needs only see the mark and associate itself with certain expectations and standards. This is not the case with a company name which is only a mark of identity to the legal person that is the company. Although company names may eventually earn the notoriety, reputation and association with certain standards in like measure as do trademarks, the extent of exclusivity and protection of the company name, without registration of a mark, would still fall short of the standard of protection conferred by a trademark.

The upshot of the foregoing analysis is that in the present matter, the protection provided to the name “Agility” by the trademark registered in favour of the Plaintiffs by far overrides the protection of the name “Agility Logistics” secured through the mere registration of the name as a company. The exclusivity in the use of the name that is conferred upon the Plaintiff through the Kenyan registration of the mark and worldwide by virtue of the status of “well known mark” confers locus standi upon the Plaintiffs to sustain a claim for infringement of the mark that the Defendant cannot equally enjoy by virtue of registration of the company under the Companies Act.”

This blogger will be closely following the developments and eventual outcome of the JamboPay case.

Intellectual Property Concerns in Kenya’s Draft National Culture Bill

HASSAN WARIO ARERO

On 27 August 2010, this blogger was among hundreds of Kenyans who witnessed the promulgation of Kenya’s Constitution. On numerous occasions here, we have discussed the far-reaching impact the 2010 Constitution has had on intellectual property laws in Kenya. For the first time in Kenya’s history, intellectual property (IP) norms were constitutionalised with corresponding obligations placed on various arms of the government to ensure that these constitutional provisions are actualised for the benefit of Kenyans.

One of these provisions is Article 11 which reads as follows:

Article 11 – Culture
(….)
11.(3) Parliament shall enact legislation to—
(a) ensure that communities receive compensation or royalties for the use of their cultures and cultural heritage; and
(b) recognise and protect the ownership of indigenous seeds and plant varieties, their genetic and diverse characteristics and their use by the communities of Kenya.

As a result of the above, Parliament is required to enact legislation to ensure that communities receive compensation or royalties for the use of their cultures and cultural heritage. This legislation should also address the recognition and protection of the ownership of indigenous seeds and plant varieties, their genetic and diverse characteristics and their use by the communities of Kenya.

In this connection, the Fifth Schedule of the Constitution requires that the legislation in respect to Culture under Article 11 must be enacted by Parliament within the first five years from the date of promulgation of the Constitution. Therefore the deadline for enactment is no later than August 27, 2015!

In a bid to meet or beat this deadline, the Ministry of Sports, Culture and the Arts has begun the process of formulating a piece of legislation on Culture. The Ministry plans to hold a stakeholders’ workshop on January 30, 2015 at KICD to develop a Bill on Culture that will later be tabled before Parliament. In preparation for this planned workshop on formulation of the National Culture Bill, the Ministry has circulated a zero draft of the Bill available here. This draft is clearly ‘zero’ as it is largely incomplete except from a few provisions relating to a proposed National Council for Culture and the Arts and a National Fund for Culture and the Arts.

This blogger’s reading of Article 11(3) is that the legislation on Culture must address important concerns touching on the promotion and protection of traditional knowledge (TK), traditional cultural expressions, folklore as well as certain in situ genetic resources. In this regard, there may be considerable overlap between the proposed National Culture Bill and the 2013 Bill on the Protection of Traditional Knowledge and Traditional Cultural Expressions Bill, previously discussed here and here. In fact, the Premable of the proposed draft TK Bill reads: “This legislation will give effect to provisions of Article 11 and 40(5) of the Constitution of Kenya 2010.”

Another case of inter-ministerial mis-communication, per chance?

From an IP perspective, this blogger believes that an important question to be answered in the formulation of the Bill on Culture is whether to use the existing IP rights systems including industrial property, copyright and plant breeders rights or to develop a sui generis system for the promotion and protection of Culture.