Yesterday the Anti-Counterfeit Agency (ACA) posted this response in the comments section of our blogpost last week titled: ‘Controversial 2018 Proposed Amendments to The Anti-Counterfeit Act’. In the face of widespread criticism from intellectual property (IP) experts, ACA has defended its proposed amendments to the Anti-Counterfeit Act which, if enacted, would effectively introduce a system for mandatory ‘recordation’ of trade marks, copyright and plant breeders rights to be administered by ACA.
Prior to writing that blogpost, this blogger had reached out to ACA for an official comment asking the following question: ‘What is your response to public concerns about the implications of the draft amendments to your Act on 1) the mandates of Kenya Industrial Property Institute (KIPI) and Kenya Copyright Board (KECOBO); 2) ease of doing business in Kenya generally; 3) international best practice?’ All the various responses from ACA will be considered in this blogpost.
Recent media reports indicate that Sony Corporation has filed an appeal in the High Court against the decision of the Registrar of Trade Marks at Kenya Industrial Property Institute (KIPI) allowing the registration of two trade marks namely “SONY HOLDINGS” (WORDS AND DEVICE) and “SONY HOLDINGS” (WORDS).
Given the high likelihood that the High Court may defer to the expert determination of the Trade Mark Registrar, this blogpost considers the ruling made by the Registrar in the opposition proceedings with the costs totaling about Kshs 1,252,400.00 awarded to Sony Holdings.
In a judgment delivered yesterday (February 9th 2016), the High Court of Uganda in Civil Appeal No 13 of 2015 has set aside the decision of the Registrar of Trade Marks at Uganda Registration Services Bureau (URSB). Mr. Justice Madrama Izama allowed the appeal by Nairobi Java House Limited with costs and found that the two marks from Kenya and Uganda in question are capable of concurrent usage.
Readers will recall that in an earlier post here, we confirmed that Nairobi Java House had filed an appeal against the decision of the Registrar in relation to trade mark opposition proceedings filed by Mandela Auto Spares Limited. The proceedings were against the registration of trade mark application numbers 48062/2013 “Java House” and “Java Sun” and 48063/2013 “Nairobi Java House” in the name of Nairobi Java House. The Registrar in his ruling upheld the objection of Mandela Auto Spares Limited and found that the proposed registration of Nairobi Java House’s trade marks would lead to confusion in the marketplace.
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.
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.
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.
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.
This blogger has received a copy of a recent trade mark ruling by the Registrar of Trade Marks referenced as In Re TMA No. 68687 “KINGSTONE”, Opposition By Bridgestone Corporation, 25th May 2015. A copy of the ruling is available here.
In this matter, Sichuan Yuanxing Rubber Co. Ltd applied for registration of “KINGSTONE” as a word mark in Class 12 of the International Classification with respect to tyres. Bridgestone Corporation opposed the registration of the mark by stating that its mark “BRIDGESTONE” is a well-known mark in Kenya and around the world registered in various classes including class 12. Therefore Bridgestone argued that the mark “KINGSTONE” is so similar to the its trade marks “BRIDGESTONE” and “FIRESTONE” as to be identical to the latter and Sichuan’s trade mark would be likely to deceive and or cause confusion among the members of the public.
“The mark in consideration in these opposition proceedings is a word mark, “DAWA MOJA STRONG”. The mark is comprised of two Kiswahili words which translate to “MEDICINE” and “ONE” respectively, in the English language. The third element of the mark is the word “STRONG”. This means that considered as a whole, the mark would literary (sic) be translated to mean “ONE STRONG MEDICINE”. It is my view that when such a term is sought to be registered and used as a trade mark for pharmaceutical products, the application must fail because the term does not qualify as a trade mark under the provisions of the Trade Marks Act.” – Assistant Trademark Registrar, Ruling in DAWA MOJA STRONG Trade Mark Opposition.
This blogger has received a copy of a recent trade mark ruling by the Registrar of Trade Marks referenced as In Re TMA No. 75546 “DAWA MOJA STRONG”, Opposition By Dawa Ltd and Sonal Holdings Ltd., 14th April 2015. A copy of the ruling is available here.
This blogger has come across a recent judgment from Uganda’s Commercial Court in Muse Af Enterprises Co. Ltd Vs Billen General Trading Ltd & 2 Ors  UGCOMMC 88. In this case, Muse filed an application for registration of the PANASUPER trademark in Uganda on 3rd August 2006 but the application was opposed by Matsushita Electronic Industrial Co. Ltd of Japan, the registered proprietors of Trademarks No. 25731 and 28536 PANASONIC. Since the registration of the trademark had been opposed, Muse requested a power of attorney from Linyi Huatai. The PANASUPER trademark was subsequently registered after URSB delivered a ruling disposing of the opposition of the trademark.
Later, Muse filed suit against Linyi Huatai and their local agent Billen for trademark infringement. However Linyi Huatai claimed that Muse had fraudulently registered the PANASUPER trademark in its own name. Linyi Huatai asked the court to cancel the registration of PANASUPER and claimed damages from Muse.