Kenya Copyright Board Bruised in IP Fight over ‘My Skool’ TV Show

MY SKOOL TV SHOW copyright registration KECOBO Kenya

Presently the Copyright Register (pictured above) shows that the same audiovisual work called “MY SKOOL TV SHOW” has two separate owners who registered it almost a year apart. In a recent High Court judgment in the case of Republic v Executive Director, Kenya Copyright Board & another Ex-Parte Sugarcane Communications Ltd [2018] eKLR, the court quashed a decision by Kenya Copyright Board (KECOBO) to cancel the copyright registration of “MY SKOOL TV SHOW” by the ex parte Applicant (Sugarcane Communications Limited). This judgment is perhaps a wake-up call for KECOBO which, unlike the Registrar of Trade Marks at Kenya Industrial Property Institute (KIPI), is not accustomed to having its decisions regarding registration of intellectual property (IP) rights challenged by courts of law.

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Outdoor Advertising Dispute in City Clock v Country Clock Trade Mark and Industrial Design Case

City Clock Nairobi Kenya by SE9 London

In a recently reported ruling in the case of City Clock Limited v Country Clock Kenya Limited & another [2016] 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”.

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Trade Mark Squatting, Blackmail and Prior Use Defence: High Court Ruling in Clips Kenya v Brands Imports Africa

hoshan clips kenya trademark case brands imports limited 2016

Recently, Kenya Law reported the case of Clips Limited v Brands Imports (Africa) Limited formerly named Brand Imports Limited [2015] eKLR which involved three disputed trade marks: ATLAS, FANTASTIC and ALPHA registered in class 16 in Bahrain, Saudi Arabia, Yemen and Kuwait by Clips Kenya’s parent company, Hoshan. From 2010 to-date, Clips Kenya has been trading in goods bearing Hoshan’s marks under a Royalty Agreement in existence from 2009. However, in 2013, Brands Imports registered all three disputed marks in Kenya which led to Hoshan commencing expungement proceedings before the Registrar of Trade Marks.

In the intervening period, Brands Imports, the registered proprietor of the disputed marks in Kenya, wrote a letter to Clips Kenya demanding a 5% payment of royalty. In the letter, Brands Imports threatened to lodge complaints with government authorities to prevent Clips Kenya from continuing to import and sell in Kenya the goods bearing the disputed marks. According to Clips Kenya, Brands Imports’ actions amount to unlawful interference of it’s business and that it could rely on the ‘prior use defence’ provided in section 10 of the Kenya Trade Marks Act.

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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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High Court Upholds Registrar’s Decision to Expunge “KENYA BOYS CHOIR” Trade Mark

kenya boys choir trade mark high court milimani nairobi judgment case 2016 photo by henry wanjala

“The appellant cannot have been credited for singing and performing well, as a choir. He was not the choir. He was the Director, the Conductor or the Instructor. Therefore, when the prowess of the Appellant was recognised for the tasks he had excelled in, that did not, and could not transfer to the Appellant, the intellectual property which vested in the choir.” – Mr. Justice Fred A. Ochieng, Misc. Cause No. 193/2015 Joseph Muyale Inzai v Henry Wanjala, Sylvester Matete Makobi, Cliff Njora Njuguna,Masambaya Fredrick Ndukwe And Geoffrey Sauke Together T/A Kenya Boys Choir & another [2016]

In a recent judgment, the High Court has upheld the ruling of the Registrar of Trade Marks to expunge Trade Mark No. KE/T/2010/67586 “KENYA BOYS CHOIR” (WORDS) in Classes 16 and 41 in the name of Joseph Muyale Inzai. From previous posts here and here, readers will recall that members of Kenyan Boys Choir filed an application with the Registrar for expungement of the mark claiming that they were aggrieved by its entry in the Register for various reasons. The Registrar ruled in favour of the Choir members and found that Inzai had no valid and legal claim to the mark for the reason that his ownership of the mark was not sufficiently substantiated as required by law. Inzai felt aggrieved by the Registrar’s ruling and moved to the High Court on an appeal. This blogpost is in relation to the High Court judgment in that appeal.

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High Court Orders Stay in “KENYA BOYS CHOIR” Trade Mark Dispute

Kenyan Boys Choir Boys Choir Kenya Twitter Account Verified

Earlier this year, we reported here this ruling: In the Matter of Trade Mark No. KE/T/2010/67586 “KENYA BOYS CHOIR” (WORDS) in Classes 16 and 41 in the Name of Joseph Muyale Inzai and Expungement Proceedings Thereto by Kenyan Boys Choir by the Assistant Registrar of Trade Marks at the Kenya Industrial Property Institute (KIPI).
In this case, one Joseph Muyale Inzai filed an application to register his trade mark “KENYA BOYS CHOIR” (WORDS) before the Registrar of Trade Marks in classes 16 and 41 of the Nice Classification. The mark was approved, published and thereafter entered in the Register of Trade Marks in 2010.

In the same year, Members of a choir known as Kenyan Boys Choir obtained registration of their business names “THE KENYAN BOYS CHOIR” and “THE BOYS CHOIR OF KENYA” under the Registration of Business Names Act. These Members of the Kenyan Boys Choir filed an application for expungement of Inzai’s mark claiming that they were aggrieved by the entry of the mark for various reasons including that they were the true owners of the mark: “KENYAN BOYS CHOIR” which was virtually identical to the mark in question: “KENYA BOYS CHOIR”. The Registrar ruled in favour of the Choir members in addition to an award of costs. The Registrar found that Inzai had no valid and legal claim to the mark for the reason that his ownership of the mark was not sufficiently substantiated as required by law.

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High Court Dismisses Judicial Review Application in “ZERO B” Trade Mark Dispute

Zero-B

This blogger has come across a recent judgment by the High Court in the case of Republic v Anti-Counterfeit Agency & 2 others Ex parte Surgippharm Limited [2015] eKLR. A copy of the judgment is available here. In this case previously highlighted here, Surgipharm Limited went to the High Court seeking judicial review orders to prohibit the Anti-Counterfeit Agency (ACA) from carrying out its enforcement mandates under the Anti-Counterfeit Act. Following a complaint against by Wiskam against Surgippharm, the Chief Magistrate’s Court, Nairobi granted ACA a warrant of entry, search and seizure was issued against Surgippharm with regard to the alleged counterfeiting activity.

While Surgippharm admits that Wiskam is the registered holder of the “ZERO -B” trademark in Kenya, Wiskam failed to disclose to ACA and the Magistrates’ Courts that Surgippharm had initiated proceedings for the expungement of the mark with the Registrar of Trade Marks at Kenya Industrial Property Institute (KIPI). Surgippharm also alleges that Wiskam also failed to disclose that had already commenced proceedings in the high court of Kenya seeking, inter alia, for an injunction order and an award of damages against Surgippharm, being HCCC NO. 542 of 2011.

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