TRADE MARK INFRINGEMENT: WHEN PROOF OF ACTUAL CONFUSION IS NECESSARY

By Daniel Mwathe Monday, May 13, 2019
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The statutory basis for trade mark infringement emanates from the provisions of section 7 of the Trade Marks Act, Cap 506 of the Laws of Kenya (Trade Marks Act).

This section stipulates that trade mark infringement arises where a person who is not the proprietor of the registered trade mark or a registered user, uses a mark identical to or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade or provision of services. This has also been one of the tests applied by the Kenyan courts over the years.

Fresh light was shed on the issue of infringement recently in the Kenyan High Court case of Landor LLC and Wpp Luxembourg Gamma Sarl v Wagude Lui t/a Landor & Associates & 2 others [2019] eKLR. The crux of the case was whether it is necessary to prove actual confusion in a trade mark infringement suit.

In this particular case, the plaintiffs had sought a permanent injunction restraining the defendants from trading, advertising, marketing or in any other way using or dealing in the name ‘Landor & Associates’ or any other name closely resembling or incorporating the first plaintiff’s name ‘LANDOR’. The basis of the application was that the defendants’ use of the name LANDOR was likely to deceive or cause confusion in the course of trade.

Differing perspectives on the need for proof

In their submissions to the Court, the defendants indicated that an allegation of deception, confusion and resemblance must be proved by a witness.  They submitted that the plaintiffs had failed to list or provide any witness statement from any of their clients who were confused by the operations of the third defendant. The plaintiffs countered this argument by submitting that proof of actual confusion was not mandatory and produced authorities to support this position.

One of the issues for determination before the Court was whether the plaintiffs had adduced evidence to prove that the defendants’ use of the name Landor & Associates was likely to deceive or cause confusion in connection with the provision of services provided by the plaintiff.  In determining this question, the Court to consider what ought to be proved and how this should be done.

In its finding, the Court relied on the provisions of section 7 of the Trade Marks Act and agreed with the plaintiffs that actual deception or confusion need not be proved. It indicated that it was enough to show that deception or confusion was likely.

The Court did note, however, that there are instances where it would be necessary to prove actual deception or confusion.  One of those instances is where a plaintiff has sought damages for the infringement. If so, evidence of actual deception or confusion would be crucial in informing the amount of damages to be awarded.

The Court also observed that, while witnesses will have their positions and views as to whether deception or confusion is likely, the final call belongs to the judge, who must give reasons for holding a certain view.

This decision is helpful in that it sheds some light on when proof of actual confusion would be required in trade mark infringement cases, as well as the requirements for proving confusion.