Trade Mark vs Company Name Registration: Innscor Int. Battles Rwandan Companies, Pizza Inn Ltd and Chicken Inn Ltd

innscor-international-rwanda-trademark-pizza-inn-chicken-limited-image-by-nlipw

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.

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Goodwill as Constitutionally Protected Property: High Court Case of Bia Tosha Distributors v Kenya Breweries, EABL, Diageo

warm-beer by gobackpackingdotcom Kenya tusker crate eabl

“I am acutely aware of the far reaching consequences of my conclusive finding that purely constitutional issues and questions have been borne out of a hitherto commercial relationship and hence the court’s jurisdiction rather than agreed mode of dispute resolution. I however do not for a moment view it that the framers of our Constitution intended the rights and obligations defined in our common law, in this regard, the right to freedom of contract, to be the only ones to continue to govern  interpersonal relationships.” – Onguto, J at paragraph 101 of the ruling.

A recent well-reasoned ruling by the High Court in the case of Bia Tosha Distributors Limited v Kenya Breweries Limited & 3 others [2016] eKLR  tackled the complex question of horizontal application of the Constitution to private commercial disputes governed by contracts with private dispute resolution mechanisms. More interestingly, the court had to consider whether the amount of Kshs. 33,930,000/= paid by the Petitioner to acquire a ‘goodwill’ over certain distribution routes or areas of the Respondents’ products can be defined as ‘property’ held by the Petitioner and as such protected under Article 40 of the Constitution.

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New Rules for Intellectual Property Business as Companies Bill 2015 Signed into Law

Uhuru Kenyatta Companies Bill 2015

This week President Kenyatta (pictured above) signed into law the Companies Bill 2015 that does away with the Companies Act Chapter 486 of the Laws of Kenya which is an archaic piece of legislation dating back to 1948. The new Companies Act is aimed at revolutionising business in the country by removing various pre-existing legislative stumbling blocks to doing business in Kenya. From an intellectual property (IP) perspective, the new Act has several important provisions that will affect how IP assets are managed by various business entities.

With over 1,000 sections, the new Act is incredibly detailed (bulky) and comprehensive. It codifies common law principles – in particular, the indoor management rule and common law fiduciary duties of directors. Along with this, it modernises company law by recognising electronic communication and the use of websites and other electronic avenues for a company’s communications. The new Act has also increased the penalties and fines for offences relating to companies. This blogpost will highlight some of the major changes in the new Companies Act.

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Platinum Distillers (Kenya) Denies “Guarana” Trade Mark Infringement Claim by Diageo North America Inc

MOMENTUM ICE AND SMIRNOFF ICE WITH GUARANA Image by Ghalfa Kenya

Recently, this blogger came across a media report stating that Diageo North America Inc, suing jointly with UDV (Kenya) Ltd, which is its subsidiary in Kenya, has claimed that Platinum Distillers Ltd has begun the manufacture and sale of an alcoholic drink in Kenya known as Momentum Ice with Guarana, which is directly infringing on its trademark, Smirnoff Ice Double Black with Guarana. Both alcoholic beverages are pictured above.

According to this media report, the US company claims that Platinum has caused Momentum Ice to be produced with an overall packaging that constitutes confusingly similar features to its Smirnoff Ice Double Black with Guarana, which is distributed in Kenya by UDV. In particular, the report has reproduced a portion of the suit papers filed by Diageo which reads: “This [packaging] has been done in a manner and style calculated to deceive members of the public that the offending product is associated with us.” As result, Diageo and UDV have reportedly asked the courts to stop Platinum from using its trademark by way of packaging and selling of Momentum Ice with Guarana, in order to prevent further confusion among consumers who think the two products are connected.

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KIPI Registrar Rules to Expunge “KENYA BOYS CHOIR” Trade Mark

Furahia Album Cover Kenyan Boys Choir dot com

In the spirit of this year’s music-themed World IP Day, this blogger has opted to share a recent 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 delivered by the Assistant Registrar of Trade Marks at the Kenya Industrial Property Institute (KIPI).

In 2010, 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 the 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”.

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The ‘Multibix’ Trade Mark Dispute: High Court Ruling in Weetabix Ltd v. Manji Food Industries Ltd

Weetabix Ltd Manji Food Industries Ltd Shopping Trade Mark IP KENYA

This blogger has recently received a copy of the High Court’s recent ruling in the case of Weetabix Ltd v. Manji Food Industries Ltd HCCC No. 53 of 2013. As previously discussed in our blogpost here, Weetabix had approached the High Court seeking a temporary injunction restraining Manji Foods, the makers and distributors of Multibix from engaging in any commercial dealings with the product Multibix. According to Weetabix, the application became necessary because despite the ruling of the Registrar of Trade Marks (as highlighted here), Manji Foods has continued to distribute and sell the Multibix product causing damages as result of trade mark infringement. The court found for Weetabix allowing its application for injunction.

A copy of the ruling is available here.

At the core of the ruling by Ogolla J was an unequivocal affirmation of the decision by the Registrar of Trade Marks from In Re TMA No. 66428 “MULTIBIX” Opposition by Weetabix Ltd 31 August 2012 where Weetabix had successfully brought opposition proceedings against the registration of the trade mark “MULTIBIX” in respect of “biscuits” (in class 30) on the grounds of likelihood of confusion contrary to Section 14 of the Trade Marks Act and that “WEETABIX” was a well-known mark under Section 15A of the Act.

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“Share A Coke” Campaign in Kenya: Intellectual Property Risk or Marketing Masterstroke?

Share a Coke with IPKenya

Ever since the “Share a Coke” campaign kicked off in Kenya earlier this month, thirsty fans countrywide have been clamouring to find their names on bottles of Coca-Cola. Some have struck gold, while others have left the store empty-handed. As many may already know, Coca Cola’s hugely successful international promotion “Share A Coke” originally started in Australia in 2011 and has since been rolling out around the world, making its African premiere in South Africa towards the end of 2013. This promotion, targetted mainly at teens and millennials, is intended to allow people to take the Coca-Cola script and replace it with their name on a bottle or can of the well-known beverage. For those with less popular or rare names, the digital version of the “Share a Coke” promotion allows users to create a virtual can with their names which is generated in .png format and available for download and social media sharing.

From an intellectual property (IP) perspective, this ‘de-branding’ campaign by Coca Cola is an eye-opener. It is no secret that the Coca-Cola Company has spent billions of dollars registering, protecting and enforcing its IP rights all over the world. For years, “Coca-Cola”, “Coke”, the Contour Bottle Design and the Dynamic Ribbon Device have been registered trademarks of The Coca-Cola Company. Having gone to such lengths to secure its IP rights, the Coca-Cola Company suddenly ditches the iconic “Coca-Cola” name from its bottles and allows the printing of names and other words on its products?!
Clearly, the Sales and Marketing guys in the room overpowered the Legal types when the idea for this ‘de-branding’ campaign was pitched and approved. While it is hard for an IP lawyer to quantify the risks of free-riding, diminishing distinctiveness, dilution and other harm to the Company’s trade marks as a result of “Share A Coke” campaign, the Sales and Marketing guys will have no problem showing how the campaign has boosted sales, provided the Company with enormous amounts of user-generated promotional content and driven traffic to the Company’s web and social media platforms.

This blogger recently visited Kenya’s “Share A Coke” website and created a virtual can, which is pictured above and available online here: https://ke.shareacokeafrica.com/can/Ipkenya. However, when one looks at the Terms of Use on the site available here, there are two IP-related issues which appear not to have been addressed:

1. What happens when a user creates a virtual can which contains a name which is a third party’s IP rights? The Terms of Use on the site ought to clearly prohibit the use of such names otherwise it may end up being held liable. In this regard, Coca-Cola ought to exercise its best discretion in determining which names may be infringing on third party IP rights.

2. What happens when a user makes commercial use of a virtual can without regard to Coca Cola’s IP rights? The Terms of Use ought to clearly state that the cans are for personal use only, including sharing on social media sites. Additionally, the Terms ought to prohibit any selling of the virtual can or the image on the COKE can. More importantly, the Terms should be explicit that the use of the site to generate a virtual can does not have the effect of granting rights in any of the intellectual property on the COKE bottles and cans, including the rendering of the names.

Finally, this blogger would invite readers to share any IP-related commentaries and articles on the “Share A Coke” campaign.