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

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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.

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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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Kenyan Java House Africa Triumphs Against Ugandan Cafe Javas in Crucial Trade Mark Court Case

Java House Africa Opens Grand Imperial branch Nile Avenue in Kampala Java House Coffee Shop Uganda Limited Photo by Sqoop

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.

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New Regulations Prohibit Registered Trade Marks as Company Names – Problem?

Companies Registry at Office of Attorney General Sheria House Nairobi by Business Daily

In an earlier post here, this blogger reported that Kenya finally enacted a new and comprehensive company law legislation. The Companies Act 2015 contains an express provision on prohibited names which states that the Registrar of Companies has the discretion not to register a company if the name applied for reservation is offensive or undesirable.

The Act states that the criteria to be used by the Registrar to determine whether a particular name is offensive or undesirable shall be prescribed by the regulations. This blogger is now pleased to report that the regulations in question have been published in the Kenya Gazette. From an intellectual property (IP) perspective, it is notable that the regulations contain a provision intended to provide greater certainty in situations where a company is registered using a name that is identical to a registered trade mark belonging to a third party.

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

Kenyan Boys Choir Boys Choir Kenya Twitter Account Verified

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.

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Law Society Publishes Article Plagiarised by Law Professor: Copyright Issues in Wachira Maina v. PLO Lumumba Dispute

cover of the law society of kenya journal volume 11 2015 number 1 lawafrica

This week, constitutional lawyer Wachira Maina took to his facebook page to express his outrage that his work had been plagiarised by a senior lawyer and professor of law, PLO Lumumba. He begins his lengthy post on social media as follows:

“I am aghast. Prof. Lumumba has gone ahead and blatantly plagiarised my April 20th 2013 article on the Presidential Election and re-published it with the grandiloquent title “From Jurisprudence To Poliprudence: The Kenyan Presidential Election Petition, 2013” in the current issue of the Law Society of Kenya Journal.”

In the comments section, Maina discloses that he has already retained legal representation and that his counsel has written to Lumumba over the issue. For intellectual property (IP) enthusiasts, this blogger reckons that if this dispute ends up before the courts, there will be a number of interesting copyright law questions to be addressed.

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Jurisdiction is Everything: Time to Merge Tribunals for Copyright, Industrial Property, Seed and Plant Varieties

tribunal judiciary kenya cms-image-000005230

As readers may know, a government taskforce had earlier recommended the merger of the three intellectual property (IP) offices dealing with copyright, industrial property and anti-counterfeit matters. The implementation of these recommendations appears to have stalled with no progress made to-date. In addition to the IP offices, there is also the matter of the various IP dispute resolution bodies created under the various IP laws: the Industrial  Property  Act establishes the Industrial  Property  Tribunal, the Copyright Act establishes the Competent Authority (akin to a Copyright Tribunal), the Anti-Counterfeit Act  establishes the Anti-Counterfeit Agency and the Seeds and Plant Varieties Act establishes the Seeds and Plant Tribunal.

Recently, the Judiciary Working Committee on Transition and Restructuring of Tribunals developed a Draft Tribunal Bill 2015 to help domicile all tribunals under the Judiciary. This is an important step that could benefit IP owners and users in the quick and expert settlement of various IP-related disputes.

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The Litter/Sanitary Bin Patent Monopoly Continues: Court of Appeal in Hygiene Bins v. Sanitam Services

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Readers of this blog are familiar with Sanitam Services (EA) Limited, the holder of ARIPO Patent No. AP 773 entitled “Foot Operated Sanitary/Litter Bin”. Over the years, Sanitam has been involved in numerous suits pertaining this patent as previously discussed here. This blogger has recently come across a judgment in the case of Hygiene Bins Limited v Sanitam Services (E.A) Ltd [2015] eKLR.

In this case, Hygiene Bins was in the Court of Appeal seeking to overturn the ruling of the High Court allowing Sanitam’s application for an injunction restraining Hygiene Bins from selling, providing services, using its foot operated sanitary bin, offering for sale, selling, passing off the same as theirs, trading in Kenya howsoever and in any manner likely to cause Sanitam’s business to be confused with that of Hygiene Bins and/or from trading in any manner as to infringe Sanitam’s granted patent pending the hearing and determination of the suit.

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Revisiting Registrar’s Ruling in Weetabix v. Multibix Trade Mark Dispute

weetabix multibix oatibix ip kenya

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.

Protection of Well Known Marks in Kenya

On this subject of well known marks, this blogger invites readers to listen to audio recordings of the presentations made by KIPI trade mark examiners during a workshop held in January 2014 available here. Readers may also wish to download Caroline Muchiri, Advocate’s powerpoint presentation made in February 2014 available here.

Below are my reactions (in bold) to some of the issues addressed in Caroline’s presentation

Read the full article here.