In a recently reported ruling in the case of City Clock Limited v Country Clock Kenya Limited & another  eKLR, the plaintiff sought injunctive orders against the defendants barring them from conducting advertising business on the clocks units using the name “Country Clock”, which was similar to the registered trade mark “City Clock”, which it was contended, were confusingly and deceptively similar in set-up, get-up and appearance to the Plaintiff’s clock units.
According to the Plaintiff, the main issue in its application for interim orders was that the Defendants have been using a name that is so similar to that used by the Applicant for over thirty (30) years, which similarity in name, it averred, is phonetically similar to the pronunciation of the Applicant’s trademark of “City Clock”.
As resident readers may have noticed, the picture directly above is an example of several Country Clock units installed across Kenya as compared with the picture at the start of this blogpost which shows one of the iconic City Clock units. In addition to the trade mark issue at the centre of the present ruling, the court noted that it was alleged by City Clock that Country Clock’s registration of the clock units as an industrial design was irregular but conceded that the Kenya Industrial Property Institute (KIPI) may more ably be accorded the opportunity to resolve that issue.
Returning to the issue of trade marks, City Clock alleged that the 2nd Defendant, who had been a former employee of the Applicant, had been dismissed on reasonable suspicion that he had been involved with the theft of clock units and components belonging to City Clock, and that it was after this dismissal that he incorporated Country Clock Limited offering services similar to those of City Clock. As result, City Clock contended that the 2nd Defendant had facilitated the infringing of City Clock’s trademark by using his good rapport with the latter’s clients to pass off their clocks as those of City Clock.
The court found that the affidavit evidence placed before it were insufficient to sustain City Clock’s claim for interim relief of injunction as it had not been able to present to the court a claim that establishes a prima facie case. In particular the court noted that City Clock had not shown that it was the registered proprietor of the trade mark “City Clock” instead it had only established that it registered the company name “City Clock Limited” in 1984.
Further, the court also considered but did not rule on whether the registration of the trade mark “City Clock” permeated over the use of the word “Country Clock” by the respondents in this case. As a result, the court held that the balance of convenience lay in favour of proceeding with the case on a more intrinsic test of the evidence and the law rather than issuing an injunction at an interim stage.