“…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.
IP Kenya 