In a recent media report here, the Commercial Court of Nyarugenge in Rwanda has ruled that it will not proceed with a case filed by Innscor International accusing two local companies Chicken Inn Limited and Pizza Inn Limited of trademark infringement in Rwanda. The basis of this ruling was reportedly that Innscor had not demonstrated to the court that it had “legal status according to the law governing registered entities in Rwanda”. Technicalities aside, it is clear that once Innscor produces its certificate of incorporation in court, this case would proceed to consider the merits of Innscor’s claim (as illustrated by the picture above), namely that registration of a name as a company name by entity A should not trump any rights in such a name acquired previously by entity B through trade mark law.
Unlike in Kenya, there is one State office in Rwanda that is in charge of both company registration and intellectual property (IP) registration namely Rwanda Development Board (RDB). In October 2013, RDB registered two companies namely Pizza Inn Ltd and Chicken Inn Ltd following which they started trading under those names which are now disputed by Innscor. It is reported that in 2014 Innscor came into Rwanda and sought to register its marks “PIZZA INN” and “CHICKEN INN” with RDB. Below is a representation of Innscor’s marks registered in Class 29 in Kenya since 2009.
From the images above, this would appear to be a classic case of “name-squatting” perpetuated by the two Rwandan companies, Pizza Inn Ltd and Chicken Inn Ltd against Innscor International. Furthermore, there may also be elements of bad faith registration and passing-off by the two local companies to the detriment of Innscor’s prior use of its arguably well known marks. However the two local companies’ claims are equally weighty: that the Innscor trademarks should not have been registered by RDB in the first place since under Rwandan law, there is a provision stipulating that during examination of trade mark applications, the examiner must cross-check the register of company names.
It is hoped that the courts in Rwanda will have the opportunity to consider the merits of these substantive claims by both sides and create useful jurisprudence in this emerging area of conflict of laws.
Meanwhile, it is recalled that the commercial courts in Rwanda are still considering the on-going case involving dispute between Tanzanian firm Mikoani Limited and its rival Bakhresa Group with regard to registration and ownership of the ‘AZANIA’ trademark. The highlights of this case are available on this blog here.
Back in Kenya, the High Court has on occasion considered the question of trade mark versus company name registration. In the leading case of Agility Logistics Limited & 2 Others v. Agility Logistics Kenya Limited, the court found that the plaintiff’s trademark protection overrides the defendant’s protection by the Companies Act. The court also found that the defendant’s registration at the Companies Registry was opportunistic. In arriving at this holding, the court in the Agility case stated as follows:-
“My take on the two pieces of legislation is that whereas the Companies Act governs registration of company names, the fact of registration per se does not extend protection to the name of the company itself as does the protection provided by a trademark.
Further, it is also pertinently clear that the protection extended by a trademark transcends the face value of a name and inheres in the name a distinctiveness that is associated with the reputation and goodwill that the proprietor of the mark has invested and earned through creation of value, quality and trust. So much so that a customer or user of the service needs only see the mark and associate itself with certain expectations and standards. This is not the case with a company name which is only a mark of identity to the legal person that is the company. Although company names may eventually earn the notoriety, reputation and association with certain standards in like measure as do trademarks, the extent of exclusivity and protection of the company name, without registration of a mark, would still fall short of the standard of protection conferred by a trademark.
The upshot of the foregoing analysis is that in the present matter, the protection provided to the name “Agility” by the trademark registered in favour of the Plaintiffs by far overrides the protection of the name “Agility Logistics” secured through the mere registration of the name as a company. The exclusivity in the use of the name that is conferred upon the Plaintiff through the Kenyan registration of the mark and worldwide by virtue of the status of “well known mark” confers locus standi upon the Plaintiffs to sustain a claim for infringement of the mark that the Defendant cannot equally enjoy by virtue of registration of the company under the Companies Act.”
The Legislature in Kenya has also been alive to this question and introduced new provisions in the Companies Act 2015 empowering the Registrar of Companies to prohibit the registration of a company if the company name applied for reservation is a registered trade mark of another entity.