Nairobi Java House Rebranding as Trade Mark Appeal Looms in Uganda

No Java Love: Recent advert in Ugandan newspaper, NEW VISION

No Java Love: Recent advert in Ugandan newspaper, NEW VISION

Many readers will recall that earlier this year the Registrar of Trade Marks in Uganda ruled in favour of Mandela Auto Spares in a matter filed to oppose the move by Nairobi Java House Limited to register trade marks containing the word JAVA in class 43 (restaurant services). The basis of the Ugandan company’s claim was that it was the registered proprietor of trademark numbers 29297 JAVAS in class 30; 40162, 47765, 47766, 47767 all CAFÉ JAVAS in classes 30, 21, 32 and 43 respectively. A copy of the ruling is available here.

This blogger has learned that Nairobi Java House now rebranded as Java House Africa is in the process of appealing the decision of the Registrar in the Commercial Court. In the meantime, Java House continues its aggressive expansion across East Africa and beyond, according to Reuters.

Continue reading

2013 Year in Review: Intellectual Property in Kenya

2013 was an election year for Kenya which resulted in the swearing in of Uhuru Kenyatta as the fourth President of the Republic. Kenyatta has been very supportive of the creative economy and has on several occasions reiterated his administration’s commitment to creating a conducive environment for creators to reap from their intellectual property (IP) assets. However, Kenyatta’s mark on IP this year was the decision to reform all state corporations and parastatals in Kenya which has set in motion plans to merge the copyright office, the industrial property office and the anti-counterfeit agency into one national IP office.

Copyright and Related Rights

In 2013, copyright news was monopolized by Safaricom which was embroiled with two high profile copyright cases with Faulu Kenya and JB Maina. Another popular copyright story was Longhorn’s acquisition of publishing rights for iconic educational textbooks writer, Malkiat Singh.

The year was also memorable for Kenya as she successfully negotiated and signed the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who are BIlind, Visually Impaired or Otherwise Print Disabled.

Industrial Property

In 2013, trade marks stole the show with several far reaching rulings by the Registrar of Trademarks as well as the landmark acquisition of a local trademark by a multinational cosmetics company. In addition, trademark administration has continued to be the major revenue earner for the national IP office, Kenya Industrial Property Institute (KIPI) especially through the Madrid System.

The Red Bull case (available online) was an important decision in that it expanded the Kenyan IP jurisprudence in respect of the doctrines of “conceptual similarity” and “well-known marks”.

In the Basmati case, a clear distinction was drawn between trade marks and geographical indications within the context of Kenya’s international obligations under the World Trade Organisation (WTO) Agreement on Trade Related Aspects of IP (TRIPs) adopted in section 40A of the Kenya Trademarks Act.

In the Pyrex case (available online), the Registrar found that the withdrawal of a threat of opposition does not amount to a surrender of your rights to institute cancellation proceedings in respect of the same trade mark. This ruling was important because it provides a practical application of two amended provisions of the Act, namely Section 36A and 36B of the Act.

Later in the year, one of the largest cosmetics companies in the world, L’Oréal fully acquired the health and beauty divisions of local firm, Interconsumer Products Ltd, makers of Nice & Lovely brands, in a multi-billion shilling transaction. This acquisition is seen as part of L’Oreal’s push to dominate the East Africa’s low-end cosmetic market.

Legislative Developments

As previously discussed here, several amendments have been proposed to the Copyright and the Anti Counterfeit Acts in the Statute Law Miscellaneous Bill currently before Parliament is passed. Earlier this year, a proposed draft law on the protection of traditional knowledge and traditional cultural expressions was validated.

This year saw the enactment of the Science, Technology and Innovation Act, Consumer Protection Act, Media Council of Kenya Act and Kenya Information and Communication Amendment Act, all of which will affect IP administration and enforcement both directly and indirectly.

For more stories from 2013, check out the IPKenya archive on the right hand side of this page and information from other sites on our twitter feed.

See you all in 2014!

L’Oréal Acquires Nice & Lovely Trademark in Multi-Billion Shilling Deal

Media reports (here, here and here) indicate that the world’s largest multinational cosmetics company L’Oréal has acquired Kenya’s Interconsumer Products Ltd’s flagship Nice & Lovely brands, in a multi-million dollar acquisition reported this past week.

L’Oréal opened shop in Nairobi in late 2011 and has for the past 18 months been in talks with Interconsumer Products Ltd for a buyout deal. To facilitate the conclusion of the deal, Interconsumer Products Ltd transferred the beauty division to a new company dubbed Interworld Cosmetics, which has now been acquired by L’Oreal. The French based cosmetics giant has now renamed the new business Interbeauty Products.

This blogger salutes Interconsumer Products Managing Director Mr. Paul Kinuthia. We have all read the story of how Mr. Kinuthia grew his business from a modest sole proprietorship in the late 1990s to a major cosmetics manufacturer in East Africa. This success story of Interconsumer Products Ltd is even more significant and instructive when viewed from an intellectual property (IP) perspective.

The mark NICE and LOVELY was registered in favour of Interconsumer Products Ltd at the Kenya Industrial Property Institute (KIPI) in 2002 but had been in use by Interconsumer since 1999. From this date onwards, Interconsumer has been actively policing its intellectual property rights in the NICE AND LOVELY mark particularly as its products begun to gain prominence not just in Kenya but in neighbouring countries, particularly Uganda.

In 2004, Interconsumer moved to the Commercial Division of Uganda’s Commercial Court to seeking restrain Nice & Soft Investments Ltd., its servants and/or agents and/or distributors from manufacturing, selling or exposing for sale or in any way dealing in cosmetics using the names “Nice & Soft”. This case was reported as Interconsumer Products Ltd V Nice & Soft Investments Ltd (2003) Miscellaneous Application No. 256 Of 2004 (available here and here). In this case Interconsumer alleged, inter alia that the respondents without any form of authority were selling cosmetics goods in Uganda under the mark “Nice & Soft” and had attempted to register a trademark under the said names to the detriment of Interconsumer. Therefore, Interconsumer argued that it’s trademark was in danger of being wasted and irreparably damaged by virtue of such use by the respondent who is selling inferior goods similar to those of Interconsumer. On the question of whether there was trademark infringement, the court noted that the respondent’s application for registration was before the Registrar of Trademarks prior to the filing by Interconsumer of the suit which suit does not aver that it is a challenge to registration. On the question of whether there was passing off, the court found that the Interconsumer pleaded the ingredients of passing off, namely the acquired reputation. The actions taken by Interconsumer to protect its NICE AND LOVELY trademark in Uganda are instructive and must be borne in mind when considering the amount L’Oréal has just paid to acquire this well-known mark.

However before this acquisition deal, many will remember that in Interconsumer had previously locked horns with L’Oréal in both the Ugandan and Kenyan courts over the NICE AND LOVELY trademark. In the Ugandan case reported as L’Oreal and Another vs Interconsumer Products Ltd Application no. 13 of 2006 (available here), L’Oreal moved to the Commercial Division of the High Court to review the decision of the Registrar of Trademarks setting aside opposition proceedings and granting registration of two trademarks, SMOOTH & LOVELY and NICE and LOVELY applied for by Interconsumer.

In the Kenyan case, L’Oréal once more moved to the High Court to challenge the decision of the Registrar of Trademarks in rejecting its opposition of the registration of the mark NICE & LOVELY HERBAL OIL MOISTURIZER by Interconsumer. In a ruling delivered last year on 21st February, the High Court dismissed L’Oréal’s appeal against the decision of the Registrar rejecting L’Oreal’s opposition to the registration of the mark by Interconsumer. The court agreed with the Registrar on several important grounds including that the mark NICE & LOVELY was not similar to DARK AND LOVELY (owned by L’Oréal) and that there could be no confusion as defined under section 14 and 15 of the Trade Marks Act. The Court also agreed with the Registrar’s conclusion that L’Oreal had failed to show that its trademark was well known in Kenya. Furthermore, the Court agreed with the Registrar’s finding that the respondent had used the mark NICE and LOVELY since 1st March 1999 and the appellant had not tendered any evidence to show that it had objected to the use of the mark in the last five years. Therefore, the common law doctrine of honest concurrent use was applicable therefore both NICE & LOVELY and DARK AND LOVELY marks could co-exist in the Trademarks Register. A detailed synopsis of this unreported case is available over at the afroip blog here.

Viewed against the above backdrop, L’Oréal’s acquisition of NICE & LOVELY is an important lesson for trademark owners not only in Kenya but throughout the East African region. Interconsumer’s investment in registration and enforcement of its (IP) rights was a crucial factor in sealing this major buy-out deal.