Tax Law and Intellectual Property: “Shell” Trade Mark Licensee Vivo Energy v. Kenya Revenue Authority

vivo energy shell licensee africa - Copy

 

The High Court recently delivered its judgment in the case of Vivo Energy Kenya Limited v Kenya Revenue Authority [2016] eKLR holding that the Commissioner of Domestic Taxes erred for concluding that a non-exclusive and non-transmissible license to use “Shell” trade marks was a sale of a property giving rise to royalty within the meaning of Section 2 of the Income Tax Act and hence chargeable to tax.

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Uganda High Court Rules for Indian Bike Manufacturer Hero MotoCorp in Trade Mark Expungement Suit

hero motocorp bike karizma trademark uganda

In a recently delivered High Court ruling in the case of Hero MotoCorp Limited v. Esteem Motors Limited & 2 Ors Misc. Cause No. 37 of 2014, Lady Justice Flavia Senoga Anglin sitting alone in the Commercial Division directed the Registrar of Trade Marks at Uganda Registration Services Bureau (URSB) to cancel and expunge from the Trade Marks Register four trade marks namely “Karizma”, “Hunk”, “Glamour” and “Splendor” registered by the first respondent – Esteem on two grounds namely, prior registration by the Applicant – Hero in India and non-use of the trademarks by Esteem in Uganda.

In its ruling, the Ugandan High Court cited with approval a number of rulings by Kenya’s Registrar of Trade Marks at Kenya Industrial Property Institute (KIPI). This blogpost is a brief summary of the facts and reasoning of the court in this case.

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High Court Allows Parallel Importation of Durex Trade Mark Products in Kenya

durex products 1272521804532_hz_cnmyalibaba_web2_24004

In a recently reported ruling in the case of LRC Products Limited v Metro Pharmaceuticals Limited [2016] eKLR, the High Court dismissed an application by the plaintiff for an injunction restraining the defendant from importing, packaging, supplying, selling or offering for sell, distributing or otherwise dealing with the ‘Durex” products. The plaintiff had also sought orders to enter into the Defendant’s premises and seize all products or packaged products bearing the Plaintiff’s trademark, or similar trademark and further, seize records of purchases and sales, invoices and any other documents which constitute or would constitute evidence necessary to substantiate its cause of action.

As a result of this ruling, a trade mark will not be infringed by the importation into or distribution, sale or offering for sale, in Kenya of goods to which the trade mark has been applied by or with the consent of the proprietor.

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Copyright and Law of Succession: High Court Suspends Payments of Les Wanyika Royalties

 

This blogger has come across the recently reported case of Sijali Salum Zuwa & 4 others v Pamela Akinyi Atieno [2016] eKLR involving a dispute over authorship and ownership of several musical works attributed to the legendary band, Les Wanyika. From 1978 to date, several founding band members have died namely Omar ‘Professor’ Shaban, Issa Juma, Mohamed Tika, John Ngereza and Foni Mkwanyule.The surviving members of the band filed suit in the High Court challenging a grant of letters of administration obtained by Pamela Akinyi, the widow of Shabani over her late husband’s estate including some forty eight (48) songs by Les Wanyika. One such song is “Pamela” (captured in the video at the start of this post) written by Shabani and dedicated to Pamela, who is the defendant in the present suit.
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How A Typo Cost Safaricom the “OKOA STIMA” Trade Mark in Favour of Colour Planet

okoa stima safaricom colour planet trademark case

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.

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Devil in the Details of Joint Collection of License Fees for Musical Works and Sound Recordings

KECOBO Public Notice on Renewal Registration License KAMP PRISK MCSK KOPIKEN February 2016 Collecting Society Kenya Copyright Board

Last week, the ever-busy Kenya Copyright Board (KECOBO) published a public notice stating that it had approved the renewals of registration as collecting societies for Music Copyright Society of Kenya (MCSK), Kenya Association of Music Producers (KAMP) and Performers Rights Society of Kenya (PRiSK) for the period January 1st to December 31st 2016. According to KECOBO, the collection by the three collecting societies in the area of music will be “jointly undertaken as per the work plan agreed by the three societies in the interest of cutting costs and reducing business disruption.” 

Further, KECOBO explains that: “Each [collecting] society shall be required to undertake certain reforms in the course of the first half of the year with a review scheduled for July 2016. KECOBO shall issue an advertisement in July [2016] inviting companies established for the purpose to express interest and bid to collect in 2017 to facilitate transitions if a new establishment is granted a license.” 

For KECOBO and the collecting societies this is no mean feat given the long journey thus far towards a single license regime for users of musical works and sound recordings in Kenya. However, KECOBO’s notice leaves out some crucial details which will ultimately determine whether this latest attempt at joint collection will succeed or fail.

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Uncertain Future for Reprographic Rights in Kenya as KOPIKEN Collecting Society Registration Not Renewed

KOPIKEN Launch Collective Management Reproduction Rights Society of Kenya

In a public notice by Kenya Copyright Board (KECOBO) published on February 4th 2016, we are informed that KECOBO at its Board Meeting of January 28th 2016 considered the application for renewal of registration as a collecting society made by the Reproduction Rights Society of Kenya (Kopiken). After consideration of Kopiken’s application, KECOBO decided not to renew Kopiken’s registration. This means that as of January 1st 2016, there is no registered collecting society for reprographic rights in Kenya. In this regard, KECOBO in its public notice states as follows: “KECOBO will be consulting stakeholders of KOPIKEN to determine its future sometimes (sic) in March 2016.”
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