‘Fire in the Sky’ (pictured above) is a stunning photograph of Nairobi’s skyline lit up against the backdrop of New Years’ fireworks. In April 2018, this work by Reinhard Mue aka Rey Matata was unlawfully copied and used by Law Society of Kenya (LSK). In June 2018, Reinhard wrote to LSK complaining about infringement of the rights to his copyright work and threatened to take legal action. To-date, LSK and its elected leaders have failed to respond to Reinhard at all, either formally or otherwise. As a member of LSK, this blogger is disappointed that the LSK leadership has allowed such a straight-forward matter to become a public spectacle.
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.
Mr. Sylvance Sange, the Acting Managing Director of the Kenya Industrial Property Institute (KIPI) has published the Trade Marks Bill 2015 for public comment.
KIPI notes that the Trade Marks Act, Cap 506 of the Laws of Kenya came into effect on 1st January 1957. Since then, the Act has undergone a number of amendments and was last comprehensively amended in 2002. In compliance with the Constitution of Kenya 2010 and in keeping with the current national and international trends in the field of intellectual property, KIPI now seeks to repeal the Act. To this end, KIPI has prepared Drafting Instructions to be forwarded to the Attorney General’s Office for the necessary action.
Members of the public and interested parties are invited to submit any written comments on this Bill to KIPI at firstname.lastname@example.org on or before April 30th 2015.
A copy of the Bill is available here
Recent media reports indicate that United Kingdom-based cereals maker Weetabix Limited has asked the High Court to bar a Kenyan company Manji Food Industries from marketing one of its products—Multibix—arguing that the name infringes on its rights under the law of trade marks and as a result Weetabix has suffered or will suffer loss and damage.
In the suit papers filed at the High Court, Weetabix has reportedly contended that: “Manji Food Industries has put up on the Kenyan market whole grain biscuits not of Weetabix’s manufacture bearing the name Multibix, that is a deceptive imitation of the well-known products of the plaintiff namely Weetabix and Oatibix”
In reply, it reported that Manji has denied the allegations by Weetabix, arguing that the Multibix brand is not intended to confuse consumers of Weetabix’s products and that it is an independent brand with its own following.
The Kenyan cereals manufacturer reportedly contended in its replying affidavit that:
“Manji admits that it manufactures, packs and distributes its product known as Multibix, but denies that it does the same deceptively to imitate Weetabix’s products. Manji denies that it is passing off its product as that of Weetabix or that it has led to confusion”
As many readers may be aware, Weetabix successfully opposed an attempt by Manji to register ‘Multibix’ as a trademark. A copy of the ruling by the Registrar of Trademarks in this matter is available here.
Despite this ruling, it is reported that Manji has continued marketing its product using the Multibix name which Weetabix argues infringes on its well-known trademarks, Weetabix and Oatibix. In this connection, Manji contends that it had lodged an intended appeal against the decision of the Registrar in the opposition proceedings. In reply, Weetabix reportedly asserted that “An intended appeal is not an appeal. An appeal is not in any way a stay of the decision of the registrar and therefore this decision is unchallenged”.
In light of the above, this blogpost revisits some of the salient findings of the Registrar’s ruling in a bid to provide necessary context for Manji’s appeal and Weetabix’s current suit against Manji.
The facts of In Re TMA No. 66428 “MULTIBIX”, Opposition by Weetabix Ltd, 31 August 2012 are briefly that Manji Food Industries Limited lodged an application for registration of trade mark KE/T/2009/066428 “MULTIBIX” (a word mark). The mark was applied for in class 30 in respect of “biscuits”. The Registrar of Trade Marks duly examined the mark in accordance with the provisions of the Trade Marks Act Cap 506 of the Laws of Kenya and the mark was approved and published in the Industrial Property Journal on 30th April 2010 on page 20.
Thereafter, Weetabix Limited filed a Notice of Opposition against registration of the mark. According to the registrar, there were two issues for determination, namely:
1. Is Manji’s mark “MULTIBIX” so similar to the Weetabix’s mark “Weetabix” as to cause a likelihood of confusion in contravention of the provisions of section 14 of the Trade Marks Act?
2. Is Weetabix’s mark “WEETABIX” a well-known mark in Kenya and therefore deserving of protection under section 15A of the Trade Marks Act?
Regarding the first issue, the Registrar relies on the test set out in the American case of Eli Lily & Co v Natural Answers Inc 233, F. 3d 456 to determine whether or not marks are similar. In that case, some of the factors to consider include:
(a) The strength of the complainant’s mark;
(b) Similarity between the marks in appearance and suggestion;
(c) The degree of care likely to be exercised by consumers; and
(d) The area and manner of concurrent use of the products.
On the claim of similarity between the marks in appearance, the Registrar makes the following finding:
“The common element between the two marks “WEETABIX” and “MULTIBIX” is the suffix “BIX” which is also a registered mark of the Opponents. The term “BIX” is not an English word and is a creation of the Opponents, which I had earlier indicated that it is a strong mark. The Applicants’ mark is comprised of the word “MULTI” and the said suffix “BIX”. I am therefore of the view that the two marks are similar in appearance.”
In determining the first issue of the opposition proceedings, the Registrar states:
“I disagree with the Applicants when they state that the respective goods of the Opponents and the Applicants are different. It is my view that the goods in respect of which the Opponents have registered their aforementioned marks are goods of the same description as the goods in respect of which the Applicants are seeking to register their mark “MULTIBIX”. This means that both the goods of the Applicants and the Opponents would be sold in the same trade channels thus enhancing the likelihood of confusion or deception. It has long been held that the closer the relationship between particular goods, the more likely any similarity in their respective trade marks would prove deceptive. For this reason, and having held that the marks are similar, then it follows that registration of the Applicants’ mark “MULTIBIX” would be against the provisions of the Trade Marks Act.
Having considered all the relevant factors in regard to similarity of the marks and having considered the two word marks and all the circumstances of these opposition proceedings as stated by Parker J in the aforementioned Pianotist’s Application, I have come to the conclusion that the two marks “WEEETABIX” and “MULTIBIX” are similar and that entry of both marks in the Register of Trade Marks would be a contravention of the provisions of sections 14 and 15(1) of the Trade Marks Act.”
The second and final issue for determination by Registrar was whether “WEETABIX” is a well-known mark in Kenya and therefore deserving protection under the provisions of section 15A of the Act. The Registrar relies on the test for well-known marks set out in the UK case referred to as Oasis Ltd’s Trade Mark Application, where the Court set out the factors to consider namely:
(1) the inherent distinctiveness of the earlier trade mark;
(2) the extent of the reputation that the earlier mark enjoys;
(3) the uniqueness or otherwise of the mark in the market place;
(4) the range of goods or services for which the earlier mark enjoys reputation; and
(5) whether or not the earlier trade mark will be any less distinctive for the goods or services for which it has a reputation than it was before.
In applying the above case, the Registrar arrives at the following finding:
“I am of the view that the Applicants have submitted adequate evidence to indicate that the mark “WEETABIX” has gained such a reputation in the Kenyan market for the mark to be considered well known in Kenya. The said reputation has been gained through promotion and marketing of the said mark on the various media in Kenya and the trade mark “WEETABIX” has come to be only associated with the goods offered for sale by the Opponents.
In the aforementioned statutory declaration sworn by Richard Martin and filed on behalf of the Opponents, it is indicated that the Opponents’ mark “WEETABIX” together with the aforementioned variants has been registered in numerous jurisdictions of the world. The Opponents have also attached a number of certificates to indicate that their said mark is registered and subsisting in the Register of Trade Marks in the respective jurisdictions. Further, there is an indication as to the various countries where the Applicants’ goods bearing the mark “WEETABIX” have been marketed. In Kenya, the trade mark “WEETABIX” was entered in the Register of Trade Marks with effect from 28th June 1954. This means that the said mark “WEETABIX” has been in the Register of Trade Marks in Kenya for the last fifty-eight (58) years. Further, records at the Registry of Trade Marks indicate that the Opponents have registered several other marks that comprise the suffix “BIX” and which are still subsisting in the Register of Trade Marks.
Further, and as earlier indicated, the mark has been used in the Kenyan market for over thirty (30) years now. In my view, the above-mentioned registrations and use in several jurisdictions including Kenya indicate that the mark is well known. In conclusion and after considering all the relevant factors, it is my opinion that the mark “WEETABIX” is quite well known in Kenya and deserves protection under the provisions of section 15A of the Trade Marks Act.”
As a result, the Registrar found that Weetabix was successful in its opposition of Manji’s application therefore the MULTIBIX application would not proceed to registration. The Registrar also awarded the costs of the opposition proceedings to Weetabix.
With this background in mind, this blogger will be keenly following the developments in the dispute before the High Court.
Beginning June 12, 2014, Kenya became entitled to receive individual fees from the World Intellectual Property Office (WIPO) through its international registration system for trade marks known as the Madrid System. This is as a result of Kenya’s Declaration (pictured above) in which it notified WIPO of its intention to receive specific fees known as ‘individual fees’ from applicants designating Kenya in Madrid system applications. This blogpost looks at this new development in the administration of trade marks and its impact for local and foreign trade mark practitioners.
Kenya joined the Madrid System in the year 1998. Since 1998, both trade mark practitioners and administrators have voiced their complaints about Madrid. For practitioners, the bone of contention has remained the fact that Kenyan trade mark agents are losing clients who would ordinarily be required to file applications through the agents. For administrators, the central complaint was that Kenya was making losses with regard to fees. This is because the fees that a member state earns under the Madrid System are lower than the fees that a member state would ordinarily earn under the national fees schedule.
As many may know, the formula for distribution of the supplementary and complementary fees for each designated country is provided for under Article 8 (5) and (6) of the Agreement and Article 8 (5) and (6) of the Protocol as well as Rule 37 of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement. In the case of Kenya, KIPI has been earning approximately 20 Million Shillings (Kshs. 20,000,000/=) annually from WIPO through the Madrid system.
In 2013, the management of Kenya Industrial Property Institute (KIPI) decided that in accordance with Article 8(7)(a) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, a declaration should be made to have Kenya receive individual fees. The decision was forwarded to the KIPI Board of Directors and upon approval, the matter was forwarded to the Ministry of Foreign Affairs and International Trade through the Ministry of Industrialization and Enterprise Development for submission to WIPO.
While we do not know exactly how much Kenya stands to gain from individual fees, it is hoped that the fees will be much higher than the Kshs. 20,000,000/ received before the declaration was made.
From a local trade mark practitioner’s perspective, the declaration does not affect applications made under Madrid System. This is because the practitioners making such applications would be representing Kenyan residents who according to the Madrid Agreement require a basic registration of the respective mark in Kenya and according to the Madrid Protocol require a basic application for registration of the respective mark in Kenya. This means that the fees payable would be equivalent to the individual fees that would be payable under the new system, apart from the publication fees which the declaration did not include.
The effect on foreign trade mark practitioners making applications designating Kenya under Madrid System is that they would need to advise their clients on the new fees as indicated in the declaration. In accordance with the provisions of Article 8 (7) (a) of the Protocol, the fees indicated in the declaration are identical to the fees payable under the Trade Mark Rules for Kenyan non-residents. The declaration states as follows:
Designation of KENYA (in an international application or subsequent designation)
– for one class of goods or services $350 (three hundred and fifty)
– for each additional class $250 (two hundred and fifty)
Where the mark is a collective or certification mark
– as above
Renewal of an international registration containing a designation of KENYA:
– for one class of goods or services $200 (two hundred)
– for each additional class $150 (one hundred and fifty)
Where the mark is a collective or certification mark
– as above
As many readers may know, the Jubilee government of President Uhuru Kenyatta, his Deputy William Ruto and his Cabinet mark the end of their first year in office this month. To this end, Gado’s comic in today’s Daily Nation newspaper depicts Kenyatta and Ruto being accused of copyright infringement by the immediate former president Kibaki. The message is clear: the Jubilee government is literally singing the same tune as the previous government.
As this blogger has previously noted, 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 lasting mark on IP in the past 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. (See this blogger’s comments on the merger here and here).
According to recent media reports, the heads of the various government parastatals spent the month of March at the Kenya School of Government deliberating and making recommendations to the Jubilee Government on the best ways to merge the various state agencies across the various sectors, including intellectual property administration and enforcement. Unconfirmed whispers received by this blogger indicate that the proposed name for the new IP body is the Intellectual Property Organisation of Kenya (IPOK) which will be composed of three directorates (Copyright and Related Rights, Industrial Property and Anti-Counterfeit). This new body, IPOK, will be run by a Director-General, much like the African Regional Intellectual Property Organisation (ARIPO) or the World Intellectual Property Organisation (WIPO).
Regardless of the new IP body’s format, it is clear that members of the Jubilee Cabinet will play a crucial role to ensure that this body functions smoothly and delivers on the expectations of Kenyans. In particular, the Cabinet Secretaries in charge of Industrialisation, Justice and Culture will play the greatest role to midwife and steer the operationalisation of the proposed IP body. In a recent publication titled “Cabinet Scorecard”, the Star newspaper used the following rating to gauge the performance of the Jubilee Cabinet over the past year:
“A. You are doing an excellent job
B. Good, but room for improvement
C. You are okay
D. Get your act together
F. Please fire him, Mr President”
According to the Star, no member of the Executive obtained an “A” grade with Kenyatta being the highest scorer with a “B” grade. The Cabinet Secretary for Industrialisation, Adan Mohammed was among the lowest scorers with a “D” grade.
The scorecard reads in part:
“A year later, no one can say with certainty whether he [Mohammed] has done anything let alone inspire change. Nothing much has been heard of his ministry and nothing has reverberated on the ground from the golden touch everyone expected from him…It is no surprising therefore that in the ministry’s website, only three events appear in the “news and events” category one year later.”
Many will recall that Mohammed’s docket is the parent ministry for two out of the three IP agencies to be merged, namely the Kenya Industrial Property Institute (KIPI) and the Anti-Counterfeit Agency (ACA). Furthermore, it is widely speculated that the Industrialisation Ministry may be charged with direct oversight and supervision over the new IP body.
As the Jubilee government enters the second year of its administration, this blogger will continue to review the highs and lows of the Executive, including the current national IP offices, in promoting, supporting and protection the IP rights of the Kenyans.
In a recent article in the New York Times here, it is alleged that Ugandan tabloid newspaper Red Pepper infringed the copyright of Denver David Robinson, the photographer behind the photographic project titled: “We Are Here: LGBTI in Uganda” which was published by The Advocate, an American L.G.B.T. magazine here.
From an intellectual property (IP) perspective, this blogger aims to discuss Robinson’s claim against Red Pepper and the extent to which the provisions of fair use under Ugandan copyright law would be applicable. In addition, this blogger will also consider the moral rights issues that may arise in this case.
Read the full article here.