High Court Upholds Registrar’s Decision to Expunge “KENYA BOYS CHOIR” Trade Mark

kenya boys choir trade mark high court milimani nairobi judgment case 2016 photo by henry wanjala

“The appellant cannot have been credited for singing and performing well, as a choir. He was not the choir. He was the Director, the Conductor or the Instructor. Therefore, when the prowess of the Appellant was recognised for the tasks he had excelled in, that did not, and could not transfer to the Appellant, the intellectual property which vested in the choir.” – Mr. Justice Fred A. Ochieng, Misc. Cause No. 193/2015 Joseph Muyale Inzai v Henry Wanjala, Sylvester Matete Makobi, Cliff Njora Njuguna,Masambaya Fredrick Ndukwe And Geoffrey Sauke Together T/A Kenya Boys Choir & another [2016]

In a recent judgment, the High Court has upheld the ruling of the Registrar of Trade Marks to expunge Trade Mark No. KE/T/2010/67586 “KENYA BOYS CHOIR” (WORDS) in Classes 16 and 41 in the name of Joseph Muyale Inzai. From previous posts here and here, readers will recall that members of Kenyan Boys Choir filed an application with the Registrar for expungement of the mark claiming that they were aggrieved by its entry in the Register for various reasons. The Registrar ruled in favour of the Choir members and 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. Inzai felt aggrieved by the Registrar’s ruling and moved to the High Court on an appeal. This blogpost is in relation to the High Court judgment in that appeal.

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“SONA MOJA” Firm Successfully Opposes “DAWA MOJA STRONG” Trade Mark

SONA MOJA DAWA KENYA

“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.

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No Similarity between “AIRTAL” and “ZYRTAL MR” Trade Marks: High Court Judgment in Pharmaken Ltd v. Laboratories Almirall S.A

ZYRTAL AIRTAL

“In the circumstances of this case accordingly, it is difficult to understand how the Registrar of Trade Marks whether under Section 14 or 15 of the Act, arrived at his conclusions. The marks are clearly phonetically and visually different and are not similar or identical. The goods are by colour, shape and size different. The goods are by constitution not identical or similar. The likelihood of the goods being dealt with by the usual public is meagre. The possibility of a confusion arising therefore is also meagre.” – Onyancha, J on 25th day of May, 2015.

This blogger has recently come across the judgment in the case of Pharmaken Limited v Laboratories Almirall S.A [2015] eKLR. A copy of the judgment is available here.
The background of this case is as follows: Pharmaken applied for registration of the trade mark “ZYRTAL MR” in class 5 for human medicine. The application was examined and later approved for advertisement. Almirall filed a notice of opposition to the registration of the mark. Almirall stated that it owns the trade mark number 39575 “AIRTAL” in class 5 which has become well known to the Kenya public. Almirall further alleged that the said application resembles their trade mark “AIRTAL” visually and phonetically and that confusion would arise in the mind of the public.

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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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Judicial Review of Anti-Counterfeit Seizures: High Court Judgment in the ‘Omega Dustless Chalk’ Case

omega dustless chalk

This blogger has come across a recent judgment by the High Court in the case of Republic v Anti Counterfeit Agency & 3 others Ex-parte Omega Chalk Industries (1993) Limited & another [2015] eKLR. Omega Chalk Industries (1993) Limited and Chemical and School Supplies Limited (“the applicants”) sought orders orders of prohibition, certiorari and mandamus against the Anti-Counterfeit Agency (ACA) with respect to seizures made of goods bearing the alleged infringing mark ‘Omega Dustless Chalk’ registered by Omega School Boards and Accessories Limited (“the interested party”). The court dismissed the application in its entirety rightly noting that section 25(3) of the Anti-Counterfeit Act provides an “alternative remedy which is more convenient and appropriate for the resolution of the issues” raised by the applicants relating to the alleged wrongfulness of the seizure by ACA.

A copy of the judgment is available here.

In the judgment, the court held that the “court of competent jurisdiction” referred to under section 25 of the Act cannot be a “judicial review court” since the court “is not the court empowered to deal with merits” and that such a court “would not be entitled to quash a decision made” by a court “merely on such grounds as the decision being against the weight of evidence” or that the court “in arriving at its decision misconstrued the law” or that the court “believed one set of evidence as against another” or that the court has “ignored the evidence favourable to the applicant while believing the evidence not favourable to him”.

Some IP enthusiasts will recall the ruling of the Registrar of Trade Marks In the Matter of Trade Mark No. KE/T/2008/63557 “OMEGA SCHOOL BOARDS AND ACCESSORIES” (WORDS and DEVICES) in Class 16 in the Name of Omega School Boards and Accessories Limited and Expungement Proceedings Thereto by Omega Chalk Industries (1993) Limited and Chemical and School Supplies Limited delivered on August 28, 2013 where it found that the interested party as above had a valid and legal claim to the mark “OMEGA SCHOOL BOARDS AND ACCESSORIES” before applying to register the same in accordance with the provisions of section 20(1) of the Trade Marks Act. Furthermore the Registrar found that the applicants as above did not qualify as aggrieved persons in accordance with the provisions of section 35 of the Trade Marks Act. Therefore the Registrar dismissed the application for expungement of the interested party’s mark by the applicants.

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

jambopay

“…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.