In Kenya’s cut-throat hair business, three competitors (the purveyors of hair extensions branded ‘Darling’, ‘Angels Hair’ and ‘Sistar’ respectively) have distinguished themselves through aggressive marketing and strategic litigation over their brands. In a previous blogpost here, we highlighted an interesting High Court case where the Sistar hair maker filed a trade mark infringement suit against both its rivals, Style Industries (of the ‘Darling’ fame) and Sana Industries, known for ‘Angels Hair’.
In this latest installment, we focus on the recently reported High Court ruling in Style Industries Limited v Sana Industries Co. Limited  eKLR in which the Plaintiff (Style) was partially successful in its application for both injunctive relief and Anton Piller orders against the Defendant (Sana) for infringement of its ‘VIP COLLECTION’ trade mark.
Recently, Kenya Law reported the case of Clips Limited v Brands Imports (Africa) Limited formerly named Brand Imports Limited  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.
In a recently reported ruling in the case of LRC Products Limited v Metro Pharmaceuticals Limited  eKLR, the High Court dismissed an application by the plaintiff for an injunction restraining the defendant from importing, packaging, supplying, selling or offering for sell, distributing or otherwise dealing with the ‘Durex” products. The plaintiff had also sought orders to enter into the Defendant’s premises and seize all products or packaged products bearing the Plaintiff’s trademark, or similar trademark and further, seize records of purchases and sales, invoices and any other documents which constitute or would constitute evidence necessary to substantiate its cause of action.
As a result of this ruling, a trade mark will not be infringed by the importation into or distribution, sale or offering for sale, in Kenya of goods to which the trade mark has been applied by or with the consent of the proprietor.
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.
The image above is a collage of screenshots from the websites of Standard Bank and Barclays Bank showing that both banks have banking products/services branded with the identical words: “Prestige Banking”. In this connection, readers of this blog will no doubt have come across the advertisement of the application for registration of Trade Mark Application (T.M.A) Number 79424 “PRESTIGE BANKING” (WORDS) by Barclays Bank PLC on pages 10-12 of the August 2015 Industrial Property Journal. As a result, this blogger reckons that the stage is set for Standard Bank to oppose the registration of this mark by Barclays Bank, if it so wishes.
In this regard, Standard Bank would also wish to consider the recently published ruling of the Registrar of Trade Mark in the matter referenced as In Re TMA No. 79424 “BARCLAYS PRESTIGE BANKING”, EX PARTE HEARING., 6th February 2015. In this ex parte hearing, Barclays appeared before the Registrar to challenge the latter’s decision to reject Barclays’ applications for “BARCLAYS PRESTIGE BANKING” (WORDS) and “PRESTIGE BANKING” (WORDS) for being similar to the mark SMA NO. 2976 “PRESTIGE PLAN” (WORDS AND DEVICE) in the name of the Standard Bank of South Africa with respect to services of a similar description and character as those in respect of which the applications by Barclays had been made. A copy of the ruling is available here.
This blogger has received a copy of a recent trade mark ruling by the Registrar of Trade Marks referenced as In Re TMA No. 68687 “KINGSTONE”, Opposition By Bridgestone Corporation, 25th May 2015. A copy of the ruling is available here.
In this matter, Sichuan Yuanxing Rubber Co. Ltd applied for registration of “KINGSTONE” as a word mark in Class 12 of the International Classification with respect to tyres. Bridgestone Corporation opposed the registration of the mark by stating that its mark “BRIDGESTONE” is a well-known mark in Kenya and around the world registered in various classes including class 12. Therefore Bridgestone argued that the mark “KINGSTONE” is so similar to the its trade marks “BRIDGESTONE” and “FIRESTONE” as to be identical to the latter and Sichuan’s trade mark would be likely to deceive and or cause confusion among the members of the public.
“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.
This blogger has come across a recent judgment by the High Court in the case of Republic v Anti-Counterfeit Agency & 2 others Ex parte Surgippharm Limited  eKLR. A copy of the judgment is available here. In this case previously highlighted here, Surgipharm Limited went to the High Court seeking judicial review orders to prohibit the Anti-Counterfeit Agency (ACA) from carrying out its enforcement mandates under the Anti-Counterfeit Act. Following a complaint against by Wiskam against Surgippharm, the Chief Magistrate’s Court, Nairobi granted ACA a warrant of entry, search and seizure was issued against Surgippharm with regard to the alleged counterfeiting activity.
While Surgippharm admits that Wiskam is the registered holder of the “ZERO -B” trademark in Kenya, Wiskam failed to disclose to ACA and the Magistrates’ Courts that Surgippharm had initiated proceedings for the expungement of the mark with the Registrar of Trade Marks at Kenya Industrial Property Institute (KIPI). Surgippharm also alleges that Wiskam also failed to disclose that had already commenced proceedings in the high court of Kenya seeking, inter alia, for an injunction order and an award of damages against Surgippharm, being HCCC NO. 542 of 2011.
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”.
As many readers may recall, the Member States of the African Regional Intellectual Property Organization (ARIPO) adopted the Swakopmund Protocol on the protection of traditional knowledge and expressions of folklore on August 9, 2010 at Swakopmund in the Republic of Namibia. Section 27 of the Protocol provides that it shall come into force three (3) months after six (6) states have deposited their instruments of ratification or accession with the Government of the Republic of Zimbabwe.
Since the adoption of the Protocol, the following five (5) states have deposited their instruments of ratification or accession: Botswana, Zimbabwe, The Gambia, Rwanda and Malawi. The sixth and final ratification was deposited (fittingly one might add) by Namibia on February 11, 2015. Therefore, the Swakopmund Protocol shall enter into force on May 11, 2015.