For the Second Time, Sony Trade Marks Case Goes to the Court of Appeal

Since 2014, we have chronicled on this blog here, here and here an interesting trade mark dispute in Kenya between local company Sony Holdings and Japanese electronics maker Sony Corporation. This blogger is reliably informed that an appeal has already been filed in the Court of Appeal against last month’s decision of the High Court in the reported case of Sony Corporation v Sony Holding Limited [2018] eKLR. In order to discern the likely grounds of appeal, it is important to consider this recent judgment made by the High Court.

How A Typo Cost Safaricom the “OKOA STIMA” Trade Mark in Favour of Colour Planet

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.

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

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.

Kenafric ‘Fuma’ Footwear Denies Counterfeiting Claims by Puma

This blogger has previously blogged here and here about Kenafric’s fatal attraction to well-known trade marks, to put it mildly. The latest victim of Kenafric’s attraction is none other than Puma AG Rudolf Dassler Sport (Puma for short). In this connection, this blogger came across a recent ruling in the case of Kenafric Industries Limited & another v Anti-Counterfeit Agency & 3 others [2015] eKLR.

In this case, Puma through its representative Paul Ramara lodged complaints at Anti-Counterfeit Agency (ACA) against Kenafric for trade mark infringement. ACA and Ramara went to Kenafric’s premises and demanded to check the same for goods in the name of Puma a demand Mikul Shah a director at Kenafric declined to comply with due to the fact that his company had not been served with any Court order directing the said search and entry. Consequently, Shah was arrested, taken to Ruaraka Police Station and charged with the offence of obstruction and released on bond.

Oh là là Lacoste: Crocodile International Trade Mark Awaiting Registration in Kenya

Readers of this blog may be aware of the 50-year trade mark battle that has been going on between Lacoste S.A and Crocodile International PTE Ltd (“CIL”). These companies were formed about 10 years apart on opposite corners of the globe: one in France in 1933 and the other in Singapore in 1943. Historically, the battle has focused on Lacoste’s right-facing crocodile mark and CIL’s left-facing crocodile mark with trademark suits filed in numerous jurisdictions around the world.

All Eyes on Standard Bank as Barclays Bank “PRESTIGE BANKING” Trade Mark Published

The image above is a collage of screenshots from the websites of Standard Bank and Barclays Bank showing that both banks have banking products/services branded with the identical words: “Prestige Banking”. In this connection, readers of this blog will no doubt have come across the advertisement of the application for registration of Trade Mark Application (T.M.A) Number 79424 “PRESTIGE BANKING” (WORDS) by Barclays Bank PLC on pages 10-12 of the August 2015 Industrial Property Journal. As a result, this blogger reckons that the stage is set for Standard Bank to oppose the registration of this mark by Barclays Bank, if it so wishes.

In this regard, Standard Bank would also wish to consider the recently published ruling of the Registrar of Trade Mark in the matter referenced as In Re TMA No. 79424 “BARCLAYS PRESTIGE BANKING”, EX PARTE HEARING., 6th February 2015. In this ex parte hearing, Barclays appeared before the Registrar to challenge the latter’s decision to reject Barclays’ applications for “BARCLAYS PRESTIGE BANKING” (WORDS) and “PRESTIGE BANKING” (WORDS) for being similar to the mark SMA NO. 2976 “PRESTIGE PLAN” (WORDS AND DEVICE) in the name of the Standard Bank of South Africa with respect to services of a similar description and character as those in respect of which the applications by Barclays had been made. A copy of the ruling is available here.

Conflicts between Trade Marks Registry and Companies Registry: High Court Ruling in JamboPay v Jambo Express Limited Case

“…whereas the Companies Act deals with the registration of companies and the responsible office is the Registrar of companies, the Act is often to find itself in conflict with the Trade Marks Act for as longs as there is no interlink between the two Acts of Parliament in practical sense. The conflict arises this way. For instance, a trademark is registered in respect of a class of services may conflict with a trade name of a company or company with similar activities or services. This lack of coordination between registering authorities has caused and will continue to cause extreme anxiety to consumers of the two services as well as judges who will be called upon to resolve those conflicts which would otherwise have been avoided were it not for the unhealthy state of institutional operations.” – Justice F. Gikonyo in Webtribe Limited T/A Jambopay v Jambo Express Limited [2014] eKLR at para 15

This blogger has come across a recent ruling by the High Court in the case of Webtribe Limited T/A Jambopay v Jambo Express Limited [2014] eKLR. In this case, Webtribe went to court claiming that Jambopay Express Limited infringes on Webtribe’s trademark Jambopay. In support of its claim, Webtribe produced a certificate of registration of trademark stating that the latter is the registered proprietor of the trade mark number 67127 consisting of the word ‘Jambopay’ registered in class 36 which is valid and subsisting from the 17th December, 2009. Jambopay Express Limited refuted Webtribe’s claim and produced Certificate of Incorporation number CPR/2012/86453 stating that the latter is a company that was registered on 11th October, 2012.

Although the main subject of the suit was the alleged infringement of a trade mark as well as a challenge to the registration of a company, the learned judge restricted his ruling to determining whether Webtribe had met the legal thresholds to be granted its request for a temporary injunction. The court found against Webtribe’s application and stated as follows:

“…a just determination of the issues herein especially of the plaintiff’s [Webtribe’s] right and alleged infringement of trademark does not just depend on the registration of the Trademark ‘Jambopay’ by the plaintiff but includes determination of other issues such as whether the protection provided to the name “Jambopay” by the trademark registered in favour of the Plaintiff overrides the protection of the name “Jambopay Express Limited” secured through the registration of the name as a company; and whether the defendant’s [Jambopay Express Limited’s] intent in registration of its trade name was to cause confusion among consumers and to capitalize in the Plaintiff’s goodwill in the online payment services market. Equally, the circumstance in which the Defendant Company was registered is in the center of this suit and whether it is an infringement as alleged. In light thereof, the material before the court is not sufficient for the Court to issue an injunction.”

As many readers may know, the Trade Marks Registry and the Companies Registry were previously both under the State Law Office. Therefore when registering a trade mark or reserving a company name, it was easier to close reference either the Companies Registry database or the Trade Marks Registry database to see if there were any conflicts. This has since changed. The Trade Marks Registry is under KIPI while the Companies Registry remains under the State Law Office. This legislative and institutional separation has brought about many challenges and disputes for people who are registering companies or trade marks in Kenya. As a result there has been an increase in “name-squatting” which impedes business and trade markets in the country. In aiming to resolve these disputes, aggrieved parties are forced to approach the High Court for determination which ends up being both expensive and time-consuming.

In an earlier case: Agility Logistics Limited & 2 Others v. Agility Logistics Kenya Limited, the court was faced to a similar dispute as in the present JamboPay case. In the Agility case, the court found that the plaintiff’s trademark protection overrides the defendant’s protection by the Companies Act. The court also found that the defendant’s registration at the Companies Registry was opportunistic. In arriving at this holding, the court in the Agility case stated as follows:-

“My take on the two pieces of legislation is that whereas the Companies Act governs registration of company names, the fact of registration per se does not extend protection to the name of the company itself as does the protection provided by a trademark.

Further, it is also pertinently clear that the protection extended by a trademark transcends the face value of a name and inheres in the name a distinctiveness that is associated with the reputation and goodwill that the proprietor of the mark has invested and earned through creation of value, quality and trust. So much so that a customer or user of the service needs only see the mark and associate itself with certain expectations and standards. This is not the case with a company name which is only a mark of identity to the legal person that is the company. Although company names may eventually earn the notoriety, reputation and association with certain standards in like measure as do trademarks, the extent of exclusivity and protection of the company name, without registration of a mark, would still fall short of the standard of protection conferred by a trademark.

The upshot of the foregoing analysis is that in the present matter, the protection provided to the name “Agility” by the trademark registered in favour of the Plaintiffs by far overrides the protection of the name “Agility Logistics” secured through the mere registration of the name as a company. The exclusivity in the use of the name that is conferred upon the Plaintiff through the Kenyan registration of the mark and worldwide by virtue of the status of “well known mark” confers locus standi upon the Plaintiffs to sustain a claim for infringement of the mark that the Defendant cannot equally enjoy by virtue of registration of the company under the Companies Act.”

This blogger will be closely following the developments and eventual outcome of the JamboPay case.

The Maasai Intellectual Property Initiative: Why Should Others Do Pro-Bono IP Work For Kenya?

In a recent media report titled: “Maasai elders swap Kenya for Holborn Viaduct”, the global law firm Hogan Lovells has reportedly invited Maasai elders to the United Kingdom (UK) as part of its intellectual property (IP) pro bono work. As the report explains:

The firm has been doing intellectual property (IP) pro bono work, led by partner Sahira Khwaja, to try to secure a trademark for the tribe after the recognisable Maasai image has been used repeatedly used in advertising campaigns without any of the spoils making their way back to the tribe itself.
Lovells is working with Elders from the Maasai of Kenya and Tanzania through charity Light Years IP,  which helps developing country producers win ownership of their intellectual property – should they choose to.

Light Years IP is a non-profit organization dedicated to alleviating poverty by assisting developing country producers gain ownership of their intellectual property and to use the IP to increase their export income and improve the security of that income. The Maasai Intellectual Property Initiative (MIPI) was founded by Light Years IP who designed a 7 point plan and IP strategies for the Maasai to achieve control over their iconic brand.

According to Light Years IP CEO, Ron Layton:

…the Maasai people have not yet decided on trademark ownership or appointment of Hogan Lovells to carry out trademark work. The Maasai elders are visiting London to obtain information to assist their community make such decisions. Above all, Light Years IP seeks for respect to be shown to the Maasai. Hogan Lovells are assisting Light Years IP in a range of work.

Comment:

First off, this blogger is ashamed that Kenya’s leading IP firms would rather religiously ‘network’ at International Trademark Association (INTA) Annual Meetings than take up worthy pro-bono IP matters such as MIPI.

Read the rest of this article on the CIPIT Law Blog here.

Why Intellectual Property Law in Kenya Should Recognise Colour Trademarks

It is said that if you see a woman wearing the shoes pictured above, three things can be deduced. One, she spent an arm and a leg (and a foot?) on them. Two, those shoes are pronounced Christian Louboutin. Three, the surrounding women are a tad jealous.

This blogger has been following the spirited campaign by Christian Louboutin to assert and protect its trademark red sole, culminating in the highly anticipated outcome of its on-going court battle with fashion house Yves Saint Laurent (YSL).

The story goes something like this: in 1992, Christian Louboutin decided to give his shoes a distinctive feature by painting their soles with red nail polish. Over time, this red colour has become the signature look of his shoe collections. In 2008, the USPTO granted Christian Louboutin a trademark registration for the red-coloured sole in the following terms:

Trademark Reg. No:
3,361,597

Date:
January 1, 2008

Goods:
Women’s high fashion designer footwear

Description:
The color red is claimed as a feature of the mark. The mark consists of a lacquered red sole on footwear. The dotted lines are not part of the mark but are intended to only show placement of the mark.

In 2011, YSL came out with a collection of shoes that had varying colored shoes: purple shoes with purple soles, green shoes with green soles, navy shoes with navy soles and red shoes with red soles. Louboutin immediately moved to court to seek an injunction to prevent YSL from using the red sole, which the former alleged was trademark infringement in addition to a claim of $1 Million in damages.
The presiding District Court Judge Victor Marrero rejected Louboutin’s claims. His reasoning can be found at pages 21-22 and 29 of the judgment:

“Louboutin’s claim to “the color red” is, without some limitation, overly broad and inconsistent with the scheme of trademark registration established by the Lanham Act. Awarding one participant in the designer shoe market a monopoly on the color red would impermissibly hinder competition among other participants…”
(…)
“the Court cannot conceive that the Lanham Act could serve as the source of the broad spectrum of absurdities that would follow recognition of a trademark for the use of a single color for fashion items. Because the Court has serious doubts that Louboutin possesses a protectable mark, the Court finds that Louboutin cannot establish a likelihood that it will succeed on its claims for trademark infringement and unfair competition under the Lanham Act. Thus there is no warrant to grant injunctive relief on those claims.”

This decision was not received well by many who argued that the iconic red soles were not merely decorative but in fact fulfill a very important trade mark function insofar as they indicated the origin of Louboutin’s shoes and distinguished them from other women’s shoes.

The matter went on appeal and was decided by appellate court justices José Cabranes, Chester Straub, and Debra Livingston. This court has reversed the earlier decision and stated the following in its recent judgment:

“We hold that the District Court’s conclusion that a single color can never serve as a trademark in the fashion industry was based on an incorrect understanding of the doctrine of aesthetic functionality and was therefore error […]We hold that the lacquered red outsole, as applied to a shoe with an ‘upper’ of a different color, has ‘come to identify and distinguish’ the Louboutin brand […] and is therefore a distinctive symbol that qualifies for trademark protection.”

Although the Appeals Court ruled that Louboutin’s trade mark had acquired a ‘secondary meaning in the public eye’, it instructed the USPTO to limit Louboutin’s red sole trade mark to uses which the red sole contrasted with the remainder of the shoe:

“We conclude, based upon the record before us, that Louboutin has not established secondary meaning in an application of a red sole to a red shoe, but only where the red sole contrasts with the “upper” of the shoe. The use of a red lacquer on the outsole of a red shoe of the same color is not a use of the Red Sole Mark.”

Given the territoriality of IP, the question remains: would a colour trademark be registrable under Kenyan law?

Comments:

It is arguable whether the Registrar of Trademarks at Kenya’s Industrial Property Institute (KIPI) as well as the courts would allow attempts to “monopolise colour”. The question of colour trademarks arose partially in the Court of Appeal case of British American Tobacco v Cut Tobacco Kenya Ltd (2002) where it was said:

“[I]t has to be observed that the use of the colour red as the predominant colour on a packet of cigarettes is not the exclusive preserve of anybody, including the plaintiff, the colour being a conventional indicator in the tobacco industry of a strong brand of cigarettes.”

However it is clear that in the above case, the colour red had not acquired a secondary meaning in the context of cigarettes. In fact, the court of appeal was guided by evidence that in tobacco industry both in Kenya and internationally various colours are used to denote different brands, for instance variations of colour red denotes strong cigarettes, variations of colour blue denotes mild/light cigarettes; and variations of colour green denotes menthol cigarettes.

Nevertheless, it remains debatable whether Kenyan law allows for trademark registration of colour per se or colour that has acquired a secondary meaning associated with goods or services.

It is clear from the Trademarks Act no 4 of 2002 is that colour may be a factor when considering the distinctive character of a mark. section 19(1) of the Trademarks Act no 4 of 2002 makes the following provision:
“A trade mark may be limited in whole or in part to one or more specified colours, and in any such case the fact that it is so limited shall be taken into consideration by the court or the Registrar having to decide on the distinctive character of the trade mark.”

However the current Act fails to expressly cite ‘colour’ in the list of signs that are considered to be “marks”. The Act defines “marks” as follows:

“mark” includes a distinguishing guise, slogan, device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof whether rendered in two-dimensional or three-dimensional form

However it is argued that a purposive and contextual interpretation of the word “includes” in this section of the Act would indicate that the list above is not exhaustive. Thus, there is no reason why distinctive colours should not be registered as trade marks. In future, a great test case might arise if a new Telcom company decided to enter the market using the Green colour associated with Safaricom in their branding. Assuming Safaricom hasn’t already trademarked their color in the area of telecommunications services, perhaps Safaricom has acquired a common law trademark in their colour?

Summary of the Trade Mark Act Cap 506 Laws of Kenya

This law provides for the protection, promotion and registration of trade marks. The Act defines a mark to include a distinguishing guise, slogan, device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof whether rendered in two dimensional or three-dimensional form.

Section 15A of this Act specifically incorporates marks that are protected under the Paris Convention or the WTO Agreement’s Trade Related Aspects of Intellectual Property including Trade in Counterfeit Goods, 1994 as a well known trade mark.

Trade marks in Kenya are registered by Kenya Industrial Property Institute (KIPI) and administered by its Managing Director who is the Registrar of Trade Marks for purposes of the Trade Mark Act.

The Act has elaborate provisions against the infringement of trade mark rights.

Examples of Registered Trade Marks in Kenya

Words, devices, combinations of words and devices, slogans and numerals can all be registered as trade marks. Three dimensional marks can be registered in Kenya.

Below are some examples given by KIPI:

Trade Mark Registration Process in Kenya

Registration of trade marks takes between five to six months, including a sixty-day period during which time trade mark applications are published (advertisement) in the Industrial Property Journal. This Journal is published monthly by KIPI, with electronic copies available on KIPI’s website here. Once registered, a trade mark registration is valid for ten years from the date of registration, except where the registration is expunged or declared to be invalid through a process instituted before the Registrar of Trade Marks or the High Court of Kenya. The current trade mark fees payable to KIPI are available here.

The process is set out below:

Below are all the trade mark forms from KIPI (TM Form No. 1 – TM Form No. 55) :

	Description	PDF	Word
TM 1	Form of authorization of agent	Tm1	Tm1
TM 2	Application for Registration of a mark	Tm2	Tm2
Tm6	Notice of Opposition of Application	Form Tm6	Form Tm6
TM 10	Application for Renewal of mark	Tm10	Tm10
Tm10a	Certificate of registration of trademark	Form10a	Form10a
Tm14	Request to register Assignment or transmission	Tm14	Tm14
Tm17	Request to alter Trade or Business Address in the register	Tm17	Tm17
Tm19	Application to correct Clerical error in register or to ament document, etc.	Tm19	Tm19
Tm20	Application to change name or description in the register	Tm20	Tm20
Tm 21	Application to surrender Trade Mark fro all Goods and Services	Tm 21	Tm 21
Tm22	Application to surrender Trade Mark for some Goods and Services	Tm22	Tm22
Tm23	Application to ender disclaimer or memorandum in Register	Tm23	Tm23
Tm24	Application to add to or alter registered Trade mark	Tm24	Tm24
Tm25	Application for the Marking ,Expunging or varying of an entry in the register	Tm25	Tm25
Tm26	Application for leave to intervene in proceedings for making Expunging or varying of an entry in the register	Tm26	Tm26
TM 27	Application for search under rule 114/Application for preliminary advice as to distinctiveness.	TM 27	TM 27
Tm30	Request for certificate other than under section 22 of the act	Tm30	Tm30
TM 32	Application to enter or alter address for service	TM 32	TM 32
Tm34	Application for alteration of deposited regulations relating to certification of trademark	Tm34	Tm34
Tm43	Application to adapt Classification so that it is in accordance with section 6(2) of the act		Tm43
Tm44     TM 48	Notice of opposition to application to have classification adapted Application for registration of registered user.	Tm44 Tm48	Tm44
Tm53	Application for extension of Time	Tm53	Tm53
Tm54	Order form for copy of document	Tm54	Tm54
Tm55	Application to add goods or services to a Trade Mark or an Application	Tm55	Tm55

 

International Registration of Kenyan Trade Marks

Kenya is a member of both the Madrid Agreement and the Madrid Protocol, and trade marks registered via this Madrid route are recognised and enforceable as if they were registered in Kenya. This Madrid system is under the ambit of the World Intellectual Property Organization (WIPO) and it enables Kenyan companies and entrepreneurs to protect their trademarks in multiple countries around the world by filing one application with one set of fees and designating KIPI as the receiving office.

For a practical example of how the Madrid system works, check our blogpost here based on a hypothetical case of a fictitious product “Quail Advanced” pictured above.