Recently, a leading newspaper published a story here stating that Safaricom Limited had obtained interlocutory orders against Colour Planet Limited stating that the latter was “forbidden from interfering with any contracts Safaricom has under the banner Okoa Stima, suggesting to any third party that Safaricom does not have the right to use the name Okoa Stima.” The rest of the story is filled with several contradictory and confusing facts regarding trade mark searches made, trade mark applications filed and trade mark registrations with respect to the Okoa Stima mark by both Safaricom and Colour Planet.
This blogpost is intended to set the record straight on the specific issue of the chronology of events at the Trade Mark Registry of Kenya Industrial Property Institute (KIPI) involving both Colour Planet and Safaricom between March 2015 and January 2016. For intellectual property (IP) practitioners, this post may also serve as a cautionary tale on the importance of care and caution when handling your clients’ matters pending before KIPI.
On March 25th 2015, Colour Planet filed an application for the registration of the trade mark “OKOA STIMA” under the trade mark application number T.M.A No. 86795 in class 36 for financial services (the first application). On May 27th 2015, Colour Planet received an approval letter from the Registrar of Trade Marks allowing it to register its mark.
On April 10th 2015, Safaricom lodged its application for the trade mark “OKOA STIMA” under the trade mark application number T.M.A No. 86982 in classes 16, 36 and 38 (the second application).
Meanwhile on May 31st 2015, Colour Planet’s mark was advertised under the Industrial Property Journal no. 2015/05 at page 65 as per Section 21 and Rule 42(1) of the Trade Marks Rules. A copy of the advertisement in question is pictured below.
From the advertisement pictured above, Colour Planet stated that the meaning of “OKOA STIMA” refers to “Emergency Electricity Power on Credit” with a disclaimer stating that the registration of the mark “OKOA STIMA” shall give no right to the exclusive use of the words “OKOA” and “STIMA” each separately and apart from the mark as a whole.
Meanwhile on June 10th 2015, Safaricom received a refusal notice from the Registrar based on Colour Planet’s mark in the first application that was still undergoing registration in class 36. On 27th July 2015, Safaricom filed a Notice of Opposition as per Rule 46 of the Trade Marks Rules against the registration of Colour Planet’s application for the registration of the mark “OKOA STIMA”. As per Rule 47(3), the Registrar of Trade Marks then forwarded this Notice to Colour Planet requesting the latter to file its Counter Statement which Colour Planet prepared and filed on September 18th 2015.
On September 21st 2015, the Registrar forwarded the counter statement to Safaricom requiring them to file a Statutory Declaration as per Rule 48(4) of the Trade Mark Rules. In November 2015, Colour Planet wrote to KIPI requesting copies of all proceedings in the file as they were unable to trace their office file. In December 2015, Colour Planet wrote to KIPI twice asking the Registrar to deem the opposition as abandoned under Rule 52A of the Trade Marks Rules since Safaricom had neither filed their Statutory Declaration within the prescribed period nor had they filed for extension of time as provided for under the Trade Marks Rules. Thus Colour Planet requested the Registrar to dismiss the opposition proceedings and issue a certificate under Section 22(1) and (2) of the Trade Marks Act.
On December 10th 2015, the Registrar wrote to Safaricom stating that the Opposition was deemed withdrawn since Safaricom had neither filed its Statutory Declaration nor obtained an extension of time to have the Declaration filed at a later date. The Registrar also told Safaricom that Colour Planet would be issued with a certificate of registration. Shortly after on December 14th 2015, the Registrar issued a Certificate of Registration to Colour Planet.
It transpired soon after that on September 30th 2015 and 3rd November 2015, Safaricom had indeed obtained 90 day extensions of time to file the Statutory Declaration but that Safaricom had erroneously sought the said extensions in the matter of T.M.A No. 86982 in classes 16, 36 and 38 (the second application) and not the matter subject to the opposition proceedings T.M.A No. 86795 (the first application). As a result, Colour Planet urged the Registrar to dismiss the opposition and issue it with the Registration Certificate. Meanwhile Safaricom, in its letter of December 21st 2015, claimed that it had made “a slight typographical error” on the application for extension of time and requested the Registrar to apply the principle of natural justice and Rule 103 to allow for a hearing before making a decision adverse to it as the opponent. Safaricom submitted that the matter be determined on merit and not on technicalities contrary to Article 159(2)(d) of the Constitution of Kenya and the Registrar should uphold the extension of time that had been granted in the other matter.
On January 4th 2016, the Registrar wrote a letter to Safaricom upholding its decision to withdraw the opposition under Rule 52A stating that there was nothing in the Registry of Trade Marks to indicate that Safaricom had sought an extension of time and the error made by Safaricom was not a slight typographical error. According to KIPI, the Registrar only has discretionary power before acting adversely under Rule 103 of the Trade Marks Rule to hear parties but not after an adverse decision has been made. Further, there is no specific provision for review under the Trade Marks Act and Trade Marks Rules.
In the newspaper story at the start of this post, it is reported that in 2015 Safaricom conducted a search at KIPI’s Trade Marks Registry which revealed that the mark was available. In this regard, it is clear that the Registrar does not keep a record of searches on its database because searches are not mandatory. Applicants may conduct searches for varied reasons and may not necessarily lodge application for registration after conducting a search. Therefore, according to KIPI, Safaricom’s allegation that the searches for “OKOA STIMA” were done at almost the same time is misplaced since different trade mark examiners may deal with those applications unknowingly. Further, it is clear that it is only at the point of application when the Registrar can be able to detect two applications filed almost at the same time and remedy the same by refusing both applications until a determination as to ownership is made by Court or by agreement as per Section 15(3) of the Trade Marks Act.
Meanwhile, it appears Safaricom has filed a suit of its own (Civil Suit No. 15 of 2016) presumably following the Registrar’s decision to issue a certificate of registration to Colour Planet for the OKOA STIMA trade mark. This blogger will be closely following the developments in this matter both before the courts and the Registrar of Trade Marks.