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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Book Review: Intellectual Property Law in East Africa by Prof. Bakibinga and Dr. Kakungulu

Intellectual Property Law in Uganda East Africa LawAfrica Cover 2016

Over the past five years, this blogger has not had the opportunity to write a single book review because no texts on intellectual property (IP) law have been published in the East African region. We now have our very first text to review: “Intellectual Property Law in East Africa” recently published by LawAfrica Ltd and written by David Bakibinga and Ronald Kakungulu, both from Uganda’s Makerere University School of Law.  The description on the back of the book (presumably authored by the publisher) reads in part that: “The text deals primarily with the law relating to intellectual property protection in Uganda (…) Throughout all the chapters reference is made to the corresponding Kenyan and Tanzanian laws and relevant cases in order to give the reader a regional appreciation of the subject. Intellectual Property Law in Uganda is aimed at students pursuing intellectual property law courses in Ugandan and East African Universities as well as peripheral students of intellectual property in the humanities as well as natural,technological and health sciences disciplines. It will also be useful to legal practitioners in the field of intellectual property as a ready reference on the subject.”

As readers may have already noted, the title of the book is confusingly referred to both as “Intellectual Property Law in Uganda” and “Intellectual Property Law in East Africa” on the spine, front cover and back cover of the book. So as not to judge this book by its cover, this blog briefly examines the contents of this 260 paged paperback text to establish whether it is a book on IP Law in Uganda or a book on IP Law in East Africa or something else altogether.

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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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Kenya Copyright Board Suggests Guernsey Approach to Image Rights Protection

Kenya Copyright Board Publication Copyright News Issue 18 2015 Cover

The most recent edition of Kenya Copyright Board (KECOBO) newsletter (cover pictured above) focuses on photography and image rights. A copy of the full Issue 18 is available here.

In the lead article starting on page 4 by KECOBO Executive Director, a compelling case is made in favour of specific legal protection of image rights, particularly in the case of celebrities. The article uses the oft-cited case of Dennis Oliech v. EABL (previously discussed here) to illustrate the limitations of existing intellectual property (IP) regimes in cases of commercial appropriation of one’s personality and/or image.

The article reads in part as follows:

“The use of images and personality rights is gaining currency and there is need to ensure that the same is well regulated and third parties do not take undue advantage of the commercialisation of the same. Guernsey provides a good example and maybe we should follow suit.”

This view from the Copyright Office begs the question: will Kenya be better off with a specific law on image rights like Guernsey? This blogger argues that the answer must be “No”.

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