Mobile Developer Claims Copyright over Songa Music App by Safaricom, Radio Africa

Songa by Safaricom SongaMusic Radio Africa Facebook Kenya 27657099_536449873389869_8836242684635148261_n

The recently reported High Court case of Evans Gikunda v. Patrick Quarcoo & Two Others [2018] was born out of a business deal gone bad. At the heart of this dispute is a music application (app) that the plaintiff (Gikunda) claims to have conceptualised, designed and developed between 2012 and 2016. However Gikunda joined the employ of the 2nd Defendant (Radio Africa Group Limited) in 2013 where the 1st Defendant (Quarcoo), the Chief Executive at Radio Africa, ‘persuaded Gikunda to partner with him to ensure that the product gets to market’.

According to Gikunda, Quarcoo proposed that that once Radio Africa’s Board of Directors sanctioned its participation in his app, they would share out the ownership of the app as follows: Radio Africa – 40%; Gikunda- 30%; Quarcoo- 20%; and the remaining 10% to a strategic partner. However, in mid-2016, Gikunda resigned from Radio Africa after which he alleges that Quarcoo and Radio Africa sold the app, without his knowledge, to the 3rd Defendant (Safaricom).

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

SONY CYPyJGaWEAIOGvM

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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Oh là là Lacoste: Crocodile International Trade Mark Awaiting Registration in Kenya

Lacoste SA Crocodile International trademark logo

Readers of this blog may be aware of the 50-year trade mark battle that has been going on between Lacoste S.A and Crocodile International PTE Ltd (“CIL”). These companies were formed about 10 years apart on opposite corners of the globe: one in France in 1933 and the other in Singapore in 1943. Historically, the battle has focused on Lacoste’s right-facing crocodile mark and CIL’s left-facing crocodile mark with trademark suits filed in numerous jurisdictions around the world.

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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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Summary of the Trade Mark Act Cap 506 Laws of Kenya

This law provides for the protection, promotion and registration of trade marks. The Act defines a mark to include a distinguishing guise, slogan, device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof whether rendered in two dimensional or three-dimensional form.

Section 15A of this Act specifically incorporates marks that are protected under the Paris Convention or the WTO Agreement’s Trade Related Aspects of Intellectual Property including Trade in Counterfeit Goods, 1994 as a well known trade mark.

Trade marks in Kenya are registered by Kenya Industrial Property Institute (KIPI) and administered by its Managing Director who is the Registrar of Trade Marks for purposes of the Trade Mark Act.

The Act has elaborate provisions against the infringement of trade mark rights.

Examples of Registered Trade Marks in Kenya

Words, devices, combinations of words and devices, slogans and numerals can all be registered as trade marks. Three dimensional marks can be registered in Kenya.

Below are some examples given by KIPI:

1 kosgei kipi 2010

2 kosgei kipi 2010

3 kosgei kipi 2010

Trade Mark Registration Process in Kenya

Registration of trade marks takes between five to six months, including a sixty-day period during which time trade mark applications are published (advertisement) in the Industrial Property Journal. This Journal is published monthly by KIPI, with electronic copies available on KIPI’s website here. Once registered, a trade mark registration is valid for ten years from the date of registration, except where the registration is expunged or declared to be invalid through a process instituted before the Registrar of Trade Marks or the High Court of Kenya. The current trade mark fees payable to KIPI are available here.

The process is set out below:

4 kosgei kipi 2010

Below are all the trade mark forms from KIPI (TM Form No. 1 – TM Form No. 55) :

Description PDF Word
TM 1 Form of authorization of agent Tm1 Tm1
TM 2 Application for Registration of a mark Tm2 Tm2
Tm6 Notice of Opposition of Application Form Tm6 Form Tm6
TM 10 Application for Renewal of mark Tm10 Tm10
Tm10a Certificate of registration of trademark Form10a Form10a
Tm14 Request to register Assignment or transmission Tm14 Tm14
Tm17 Request to alter Trade or Business Address in the register Tm17 Tm17
Tm19 Application to correct Clerical error in register or to ament document, etc. Tm19 Tm19
Tm20 Application to change name or description in the register Tm20 Tm20
Tm 21 Application to surrender Trade Mark fro all Goods and Services Tm 21 Tm 21
Tm22 Application to surrender Trade Mark for some Goods and Services Tm22 Tm22
Tm23 Application to ender disclaimer or memorandum in Register Tm23 Tm23
Tm24 Application to add to or alter registered Trade mark Tm24 Tm24
Tm25 Application for the Marking ,Expunging or varying of an entry in the register Tm25 Tm25
Tm26 Application for leave to intervene in proceedings for making Expunging or varying of an entry in the register Tm26 Tm26
TM 27 Application for search under rule 114/Application for preliminary advice as to distinctiveness. TM 27 TM 27
Tm30 Request for certificate other than under section 22 of the act Tm30 Tm30
TM 32 Application to enter or alter address for service TM 32 TM 32
Tm34 Application for alteration of deposited regulations relating to certification of trademark Tm34 Tm34
Tm43 Application to adapt Classification so that it is in accordance with section 6(2) of the act Tm43

 

Tm44

 

 

TM 48

Notice of opposition to application to have classification adapted

Application for registration of registered user.

Tm44
Tm48
 

Tm44

 

 

Tm53 Application for extension of Time Tm53 Tm53
Tm54 Order form for copy of document Tm54 Tm54
Tm55 Application to add goods or services to a Trade Mark or an Application Tm55 Tm55

 

International Registration of Kenyan Trade Marks

quail-advanced-regular-strength

Kenya is a member of both the Madrid Agreement and the Madrid Protocol, and trade marks registered via this Madrid route are recognised and enforceable as if they were registered in Kenya. This Madrid system is under the ambit of the World Intellectual Property Organization (WIPO) and it enables Kenyan companies and entrepreneurs to protect their trademarks in multiple countries around the world by filing one application with one set of fees and designating KIPI as the receiving office.

For a practical example of how the Madrid system works, check our blogpost here based on a hypothetical case of a fictitious product “Quail Advanced” pictured above.