Platinum Distillers (Kenya) Denies “Guarana” Trade Mark Infringement Claim by Diageo North America Inc

MOMENTUM ICE AND SMIRNOFF ICE WITH GUARANA Image by Ghalfa Kenya

Recently, this blogger came across a media report stating that Diageo North America Inc, suing jointly with UDV (Kenya) Ltd, which is its subsidiary in Kenya, has claimed that Platinum Distillers Ltd has begun the manufacture and sale of an alcoholic drink in Kenya known as Momentum Ice with Guarana, which is directly infringing on its trademark, Smirnoff Ice Double Black with Guarana. Both alcoholic beverages are pictured above.

According to this media report, the US company claims that Platinum has caused Momentum Ice to be produced with an overall packaging that constitutes confusingly similar features to its Smirnoff Ice Double Black with Guarana, which is distributed in Kenya by UDV. In particular, the report has reproduced a portion of the suit papers filed by Diageo which reads: “This [packaging] has been done in a manner and style calculated to deceive members of the public that the offending product is associated with us.” As result, Diageo and UDV have reportedly asked the courts to stop Platinum from using its trademark by way of packaging and selling of Momentum Ice with Guarana, in order to prevent further confusion among consumers who think the two products are connected.

According to another media report, UDV Director Tracy Barnes states in an affidavit that: “We have come across direct evidence of confusion in the Kenyan market by members of the public”.

On Wednesday April 15, 2015, Platinum took this trade mark dispute to the court of public opinion by releasing a press statement in one of the national newspapers. A copy of the press statement is available here. The statement reads in part:

“Our attention has been drawn to reports in the media on 13th April 2015 to the effect that Diageo suing jointed UDV has sued our company for trademark infringement over our product MOMENTUM ICE with Guarana. (….) Platinum Distillers Limited has received court summons with regard to the alleged trademark infringement and we have instructed our lawyers to enter appearance and defend the suit. On our part we are confident and assure the public that we have followed all laid down laws and procedures including procuring licenses from the various government agencies in compliance with manufacturing and distribution of our products.”

Respectfully, it is submitted that this Press Statement represents a missed opportunity for many reasons. In this regard, it appears that the Press Statement was intended to be purely for marketing purposes with references to irrelevant information such as Platinum’s supposed “fully automated canning plant” and “high quality assurance standards”. This failed attempt at advertising has been noted by many observers online including local site BuzzMoja here.

Smirnoff Ice Double Black with Guarana Trade Mark KIPI Application Kenya 2014

From an intellectual property (IP) perspective, this blogger expected the Press Statement to address the elephant in the room, namely Diageo’s claim under trade mark law as contained its trade mark application represented above. At the very least, Platinum ought to have asserted that its trade names do enjoy protection under trade mark law in addition to making direct reference to some of the distinguishing features of its brand, packaging and overall get-up that distinguish it from Diageo’s products. In this regard, it would have been critical for Platinum to publicly rebut any claims of confusion and similarity between its products and those of Diageo.

Two days after the Press Statement, media reports indicate that the matter came before Mr. Justice F. Gikonyo on Friday April 17, 2015 and Platinum requested the court to give it more time to respond to Diageo’s claims. It is reported that the High Court gave Platinum four days to file a replying affidavit to the application by Diageo and a hearing date was set for Tuesday April 21, 2015.

This blogger will be following the developments in this case.

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