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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High Court Judgment on Caller Ringback Tones, Definition of Public Performance and Regulation of Collecting Societies

IMG-20151023-WA0023 edaily dot co dot ke

Previously we reported here that several members of Music Copyright Society of Kenya (MCSK) had filed a case in the Commercial Division of the High Court challenging a license pertaining to the caller ringback tones (CRBT) service known as “Skiza Tunes” owned by mobile network operator, Safaricom issued by the three music collective management organisations (CMOs) including MCSK.

While the outcome of this commercial suit is still pending, we have come across a recently delivered judgment in the case of Petition No. 350 of 2015 David Kasika & 4 Ors v. Music Copyright Society of Kenya in which several MCSK members alleged that the collection of royalties by MCSK under the CRBT license agreement in question violates their constitutional rights, that the making available of works for download on Safaricom’s CRBT service amounts to a private performance as such section 30A of the Copyright Act does not apply and thus the CMOs cannot collect royalties on behalf of its members as required under the section. Finally, the petition invited the court to weigh in on several damning allegations made regarding mismanagement by MCSK in its collection and distribution of members’ royalties.

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Sorry, Sony: Japanese Electronics Maker Fails to Prove “SONY” Trade Mark Well-Known in Kenya

sony shop kenya anisuma traders P1040664

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.

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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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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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