DISTINCTIVE TRADE MARKS: A KENYAN PERSPECTIVE
In this case, the plaintiff, who had registered the words “PROUDLY KENYAN” (the “Slogan”) as a trade mark, filed an injunctive application to restrain the defendants (Kenya Oil Company Limited and Kobil Petroleum Limited) from, inter alia, using the Slogan in the course of their trade on the grounds, inter alia, that the plaintiff was the registered proprietor of the Slogan for use in advertising, business management, business administration and office functions under class 35.
The defendants were engaged in the business of selling fuel and other related products and were circulating stickers with the Slogan to their customers.
The plaintiff argued that the use of the Slogan by the defendants infringed on the plaintiff’s right to the exclusive use of the Slogan and further that it erroneously indicated a connection between the plaintiff and the goods/services that the defendants offered and therefore was likely to deceive or cause confusion in the course of trade.
The defendants argued that since trade mark registration was class specific, and they were involved in far apart goods from the services offered by the plaintiff, i.e. the defendants were carrying on the business of selling fuel and related products (class 4) while the plaintiff was offering advertisement services (class 35); therefore there can be no question of the public being deceived by the defendants use of words similar to the ones of the plaintiff. The defendants also argued that the Slogan is used in connection with the defendants as proud Kenyan companies or Kenyan based companies, hence there was no connection at all between the defendants and the plaintiff. In addition, the defendants also argued that they have not rendered any services similar to those offered by the plaintiff using the Slogan, i.e. services relating to advertisement or business management.
The court, in dismissing plaintiff’s injunctive application with costs, concurred with the defendants’ arguments that the goods and services provided by the plaintiff and defendants are so essentially different that fairly regarded they are sufficient to avoid any possibility of confusion and mis-representation. The court also stated that as a matter of good practice, the court cannot allow a party to behave in a deliberate and obstinate way in order to obstruct the right of the public to use or employ common words attributable to a group of people or cause. Further, the court stated that the mere fact that a person registered a common name as a trade mark cannot entitle him any legal protection of a right acquired through the inept and inattentive action of the registering authority and that no property right can be acquired through the laxity and negligence of public officers to adhere to their legal mandate by allowing to register such unregistrable trade marks. The court took judicial notice of the fact that of late many business firms are invoking their Kenyan roots to edge out their competitors and it also noted that “Kenyaness” is meant to boost sales and inspire customer loyalty, patriotism etc. The court further stated that the Slogan is so common that it can be rightly and legally identified with all proud Kenyans and cannot become distinctive and exceptional to the direction, permission, consent and/or use of the plaintiff and the law cannot be used to pre-empt the use of common words. In conclusion, the court stated that all proud Kenyans are entitled to the use of the Slogan and the plaintiff cannot have the exclusive right to the use of the Slogan.
However, it is our well considered view that the learned judge erred in stating that in order to give protection to a trade mark, it is essential for the trade mark proprietor to establish the following with respect to the trade mark:
- it is novel;
- it is not already in use;
- it is not meant to encumber the rights of others to enjoy the use of the same;
- it is an inventive step;
- it escapes the trait of obviousness;
- it is produced or designed by a skilled worker with original functions;
- it is created with distinct artwork;
- it is not meant to pre-empt the use of a common word or art i.e. must not be a common word;
- it has the effect of deceiving a perspicacious shopper if somebody decides to create or use it differently or in another form; and
- it is created or crafted with imagination, i.e. clearly expressed and easily understood.
We are of the considered view that most of these elements are related to other IP rights other than trade marks (e.g. patents, utility models, industrial designs etc).
According to section 12 of the Trade Marks Act (Cap 506, Laws of Kenya) (the “Act”), for a mark to be registrable, it must contain or consist of at least one of the following essential particulars:
- the name of a company, individual or firm, represented in a special or particular manner; or
- the signature of the applicant or for registration or some predecessor in his business; or
- an invented word or invented words; or
- a word or words having no direct reference to the character or quality of the goods/services, and not being according to its ordinary signification a geographical name or a surname; or
- any other distinctive mark, but a name, signature or word or words, other than such as fall within the descriptions in (a), (b), (c) and (d) above, shall not be registrable except upon evidence of its distinctiveness.
The section further defines “distinctiveness” as meaning adopted, in relation to goods, to distinguish goods with which the proprietor of a trade mark is or may be connected in the course of his trade from other goods not connected to him and in relation to services, to distinguish the trade mark’s proprietor’s services from services not connected to him. Section 14 of the Act further provides that no person shall register a trade mark or part of a trade mark, the use of which would, by reason of its being likely to deceive or cause confusion, or otherwise be disentitled to protection in a court of justice or would be contrary to law, morality or any scandalous design. Further, section 15 of the Act stipulates, inter alia, that no trade mark shall be registered in respect of any goods that is identical with or nearly resembling a mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods or in respect of the same services or description of services, is identical with or nearly resembles a mark belonging to a different proprietor and already on the register in respect of the same services or description of services.
This authority affirms the following:
- The fact that descriptive words, expressions, slogans etc are not registrable as trade marks in Kenya.
- That the protection afforded by trade marks registration in Kenya is class specific.
- The mere fact that a person has registered any descriptive words, slogans, expressions or common name, etc as a trade mark cannot entitle him any legal protection of a right acquired through the inept and inattentive action of the registering authority and no property right can be acquired through the laxity and negligence of public officers to adhere to their legal mandate by allowing the registration of unregistrable trade marks.
- Local firms should not invoke their roots to edge out foreign and local competitors by registering trade marks that are not distinctive, but are merely slogans aimed at boosting their sales and inspiring customer loyalty, patriotism etc on the basis of their Kenyan identity. Therefore both local and foreign firms can successfully challenge such wrongfully registeredtrade marks in the event that they are threatened with any such misconceived trade mark infringement action.
Further, any such act of purporting to register such marks can be deemed to constitute restrictive trade practices under the recently gazetted Competition Act, 2009.
John Syekei is a Partner at Coulson Harney