DOES MERE USE CONFER PROTECTION? HIGH COURT PROVIDES ANSWER

By Mercy Mwaniki,John Syekei Sunday, April 08, 2018
  • SHARE THIS ARTICLE

Kenya’s courts have taken a stand when it comes to protecting existing trademarks, even if these are not registered or well known in the market.

The Kenyan Trademarks Act provides that any person may file a notice of opposition against a mark after its publication. In the past, when opponents opposed a mark on the grounds that they owned earlier similar marks, they generally succeeded if the earlier mark was either a registered mark or a well-known mark in Kenya, or if they had prior unregistered rights. Opponents unable to prove that their unregistered mark was well known in Kenya had little relief - until recently. Prior use of a similar mark is now sufficient grounds for an opposition.

Breaking new ground

The High Court of Kenya delivered an interesting judgment in the case of Fibrelink Limited v Star Television  Production. The court was determining an appeal against a decision of the registrar allowing an opposition against a trademark application and subsequently rejecting the application. The appellant’s main grounds for appeal were that the opponent in the proceedings before the registrar did not have a registered trademark and that the registrar had already established that the opponent’s mark was not a well-known mark in Kenya in terms of Article 6bis of the Paris Convention. The registrar’s decision was not meritorious, according to the appellant, as the opponent’s mark was neither registered nor a well-known mark and, therefore, did not deserve protection.

The court, in dismissing the appeal and upholding the decision of the registrar, held that even though the mark was not registered and was not even well known in Kenya, the opponent had managed to prove that its mark had been in use in the country. The opponent’s mark was therefore entitled to protection.

Market penetration no longer the yardstick

The High Court also addressed the issue of the extent of penetration of an earlier mark in the market. The judge de-emphasised the importance of the requirement that the mark must have significantly penetrated the market for the opponent to prove confusion or deception. The judge stated that “[i]t is not the extent to which the mark had penetrated the market which would determine whether or not the mark could be confused with another mark which was identical to or similar with the respondent’s mark”. The fact that the mark that the appellant sought to register was confusingly similar to an earlier mark used in Kenya was sufficient to deny registration to the later mark, regardless of the extent of use.

This decision also assigns to the judicial officer the responsibility of determining whether the similarity of two marks would result in confusion and deception if both marks are used in the market. It would be against public policy to allow a second or subsequent mark to be registered if, in the opinion of the judicial officer, the second or subsequent mark would lead to confusion and deception in the market.

It was also held that whether deceit or confusion was widespread or limited would not alter the fact that they existed. A trademark application that would have such an outcome must therefore be denied registration.

The effect of this decision is that any mark, whether registered or not, and whether well known or not, is afforded protection under trademark laws in Kenya as long as the mark has been in use in the country.