HIGH COURT AFFIRMS REGISTRAR’S DECISION TO FIND WEETABIX IS A WELL KNOWN MARK IN KENYA
In a recent High Court decision, regarding Weetabix Limited (“Weetabix”) and Manji Food Industries Limited (“Manji”), Justice Eric Ogola granted a temporary injunction against Manji to refrain them from selling “Multibix” products. The Judge held that, Weetabix, as the registered proprietor of the trade mark “-bix” has exclusive rights, in particular, the right to the exclusive use of the registered trade mark and the right to prohibit the use by any other person. Although there was no clear reasoning by the Judge in relation to defining what constitutes a well-known trade mark, he agreed with the findings of the Registrar in the opposition proceedings that Weetabix is indeed a well-known mark.
Weetabix had previously 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 (“TMA”) and that ‘WEETABIX’ was a well-known mark under Section 15A of the TMA. Bearing in mind that Weetabix had established an apparent series of trade marks with a recognisable and common characteristic of ‘-bix’ specifically when it is used as a suffix in relation to goods in class 30, as evidenced in its marks such as Weetabix, Minibix, Fruitbix and Oatbix among others (“The Bix Family”), the Registrar held that the closer the relationship between particular goods the more likely any similarity in their respective trade marks would prove deceptive.
The Registrar also held that Weetabix had gained reputation in the Kenyan market through promotion and marketing of the mark for the past 30 years therefore acquiring its status as a well-known mark. This decision is important because it supports a filing strategy where a person files marks that are coined to contain a common prefix or suffix to distinguish the brands as belonging to one family in a market. The Registrar’s decision is also important because it sets guidelines on how to establish that a mark is well known in Kenya.Read further