High Court Upholds Registrar’s Decision to Expunge “KENYA BOYS CHOIR” Trade Mark

kenya boys choir trade mark high court milimani nairobi judgment case 2016 photo by henry wanjala

“The appellant cannot have been credited for singing and performing well, as a choir. He was not the choir. He was the Director, the Conductor or the Instructor. Therefore, when the prowess of the Appellant was recognised for the tasks he had excelled in, that did not, and could not transfer to the Appellant, the intellectual property which vested in the choir.” – Mr. Justice Fred A. Ochieng, Misc. Cause No. 193/2015 Joseph Muyale Inzai v Henry Wanjala, Sylvester Matete Makobi, Cliff Njora Njuguna,Masambaya Fredrick Ndukwe And Geoffrey Sauke Together T/A Kenya Boys Choir & another [2016]

In a recent judgment, the High Court has upheld the ruling of the Registrar of Trade Marks to expunge Trade Mark No. KE/T/2010/67586 “KENYA BOYS CHOIR” (WORDS) in Classes 16 and 41 in the name of Joseph Muyale Inzai. From previous posts here and here, readers will recall that members of Kenyan Boys Choir filed an application with the Registrar for expungement of the mark claiming that they were aggrieved by its entry in the Register for various reasons. The Registrar ruled in favour of the Choir members and found that Inzai had no valid and legal claim to the mark for the reason that his ownership of the mark was not sufficiently substantiated as required by law. Inzai felt aggrieved by the Registrar’s ruling and moved to the High Court on an appeal. This blogpost is in relation to the High Court judgment in that appeal.

Inzai argued before the court that as the founder of the choir, he had proprietary rights and interests in the name KENYA BOYS CHOIR. As such, the continuous use of the mark KENYA BOYS CHOIR in Kenya and abroad for over 10 years, had gained distinctiveness through which his services could be distinguished.

From numerous articles cited by the court, it was accepted that the St. Aquinas High School Choir grew into the KENYA BOYS CHOIR. In this regard, the court expressly recognised that this growth and development of the choir was due to Inzai’s efforts. However the court took the position that Inzai’s intellectual property (IP) rights could only fall in the category of copyright and could not extend to trade mark rights with respect to the name KENYA BOYS CHOIR because Inzai was not the choir. In the court’s view, the trade mark rights in the choir name vest in the choir.

In finding in favour of the choir members, the court states as follows:

“If registration of the trade mark in the name of the appellant [Inzai] remained in the Register of Trade Marks, he would be entitled to the exclusive right to use it. Therefore, the boys who were performing under that trade mark or under any of the other 2 derivaties could not be permitted to use it without his authorisation or his concurrence. It was for that reason that the Respondents [choir members] were, correctly, held to be aggrieved persons pursuant to Section 35 of the Trade Marks Act. The Respondents were not simply persons who had wished to gratify their intellectual concerns. The continued validation of that trade mark, in the appellant’s name, could have a direct and adverse impact on the Respondents.”

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