“In the circumstances of this case accordingly, it is difficult to understand how the Registrar of Trade Marks whether under Section 14 or 15 of the Act, arrived at his conclusions. The marks are clearly phonetically and visually different and are not similar or identical. The goods are by colour, shape and size different. The goods are by constitution not identical or similar. The likelihood of the goods being dealt with by the usual public is meagre. The possibility of a confusion arising therefore is also meagre.” – Onyancha, J on 25th day of May, 2015.
This blogger has recently come across the judgment in the case of Pharmaken Limited v Laboratories Almirall S.A  eKLR. A copy of the judgment is available here.
The background of this case is as follows: Pharmaken applied for registration of the trade mark “ZYRTAL MR” in class 5 for human medicine. The application was examined and later approved for advertisement. Almirall filed a notice of opposition to the registration of the mark. Almirall stated that it owns the trade mark number 39575 “AIRTAL” in class 5 which has become well known to the Kenya public. Almirall further alleged that the said application resembles their trade mark “AIRTAL” visually and phonetically and that confusion would arise in the mind of the public.
The Respondent also claimed the goods covered by the Appellant mark were identical and of the same character, nature or description to the goods on which their mark is used. The Registrar of Trademarks delivered his ruling, denying the registration of the mark “ZYRTAL MR”. Pharmaken being aggrieved by the said decision of the Registrar filed an appeal in the High Court.
The High Court found in favour of Pharmaken and stated as follows:
“In the present case, the Respondent [Almirall] who opposed the registration ought to have satisfactorily demonstrated to the court how the two marks are similar. Considering the words as a whole, I do not find the trade mark “ZYRTAL MR” phonetically and visually similar or identical to the Trade Mark “AIRTAL” so as to likely cause confusion or deception in the minds of those who use the products or goods.”
The court stated that the principle to be considered in determining whether the trade mark to be registered is similar to a trade mark already registered is whether the two trademarks are so similar as to cause deception and confusion in the market. In this regard, the court held that Almirall had not discharged the onus of satisfying the court that the two marks are so similar as to likely deceive and confuse the public.
The court accepted Pharmaken’s arguments that on the face of ordinary circumstances phonetically sound similar or visually appear similar. Furthermore, the court was persuaded that the two products are prescription drugs which are not easily available to the whole public. As such, they are drugs only available through the hands of those who cannot easily be mislead or be confused, even if colour and size were to be similar i.e the professional doctors and professional pharmacists.