In an article published here, it is reported that Tanzanian firm Mikoani Limited were unsuccessful in their bid to have the Commercial Division of the High Court annul the registration of ‘AZANIA’, a trade mark whose ownership was in dispute between the parties.
Azam and Azania are bitter rivals in Tanzania, where the two firms, Bakhresa and Mikoani, are originally registered.
In 2013, Mikoani’s rival, Bakhresa Group went to the Office of the Registrar General at Rwanda Development Board (RDB) and obtained ownership of Azania trademark.
On discovering this trade mark registration, Mikoani claims to have immediately written a letter of protest to RDB which led to mediation efforts which failed because it is claimed that Bakresa lacked interest. Therefore Mikoani was forced to approach the courts for intervention.
In the case Mikoani argued that Bakhresa’s intention was to guard its Azam flour products against competition that would be posed by Mikoani’s Azania flour products in the Rwandan market. Therefore by obtaining a trade mark registration for Azania, Bakhresa had effectively blocked Mikoani from extending their home rivalry (in the Tanzanian market) to the Rwandan market.
However, according to the article, the court quashed Mikoani’s arguments on grounds that not enough evidence was provided to prove that Bakhresa’s actions were done in bad faith. The court is also said to have concurred with Bakhresa that at the time of registration, the Azania trademark had no owner in Rwanda, therefore the blame lies squarely on Mikoani for not moving fast to protect its own brand.
A representative of Mikoani is reported to have expressed his disagreement with the decision of the court as follows:
“I disagree with what the judge said that there was nothing to prove that Azania was already known in Rwanda. We have been exporting to this country since 2001 and we have invoices to prove it; we are definitely going to appeal”
This blogger is appealing to readers to share a copy of this judgment as it does not seem to be available online anywhere.
Be it as it may, the scanty information provided by the article is sufficient to raise three main issues regarding the decision of the court in this matter, namely: well known status, prior use and bad faith.
With regard to well known status, Art. 6bis of the Paris Convention provides for protection of well known marks that may not be registered in member states. There are however clear guidelines that lay down conditions for invocation of this well known status.
In this connection, it is odd that RDB is reported to have distanced themselves from the dispute claiming:
“It is mandatory to register a trademark to claim a right; -the protection is territorial, there is no agreement or convention between EAC member states on trademark protection. All member states use the Paris convention.”
The question is whether Rwanda has incorporated Article 6bis of the Paris Convention on well known marks in its trade mark laws?
With regard to prior use, this is a question of fact that must be backed by clear evidence in the subject market: proof of sales; extent of marketing e.g advertising in media; period the product has been in market; established distributorship.
The question is whether Rwanda has incorporated a prior use defence/claim/remedy for an unregistered user of a trade name in its trade mark laws?
With regard to bad faith, this can be imputed if the court asked itself the following questions:
1. Are the two companies existing and indeed rivals in another territory?
2. Does the respondent therefore know that the subject mark is actually owned by the applicant?
3. Does the respondent know that just like them, the applicant has also moved into the Rwanda market and would naturally be seeking to protect there mark in the market?
If the above questions are all in affirmative, then Mikoani’s appeal ought to be successful.