WELL-KNOWN MARKS: BURDEN OF PROOF RESTS ON THE ALLEGER
Many trade mark owners interested in the Kenyan market are located in Paris Convention or WTO Agreement states. Where they have not registered their marks in Kenya, such mark owners often rely on Section 15A of the Trademarks Act cap 506 (the Act) in an effort to protect their rights.
The protections contained in the Act grant them the right to restrain, by injunction, the use in Kenya of a trade mark which is identical or similar to the well-known mark in relation to identical or similar goods or services. This is more so where the use is likely to cause confusion among the users of the goods or services. It also precludes from registration a trade mark that is likely to impair, interfere with or take unfair advantage of the distinctive character of a well-known trade mark.
The burden of proving that a mark is well known falls on the party making the argument. Sufficient evidence has to be adduced to prove each of the elements of a well-known mark. Recently, the Kenyan courts and the Kenya Industrial Property Institute (the Institute) have become more stringent and particular in scrutinising the evidence provided in support of the argument. It is therefore essential for the proprietors of marks to understand the approach taken and evidence preferred when decisions on this issue are being made.
A recent ruling by the Institute’s Assistant Registrar of Trade Marks (Assistant Registrar) delved into the various factors considered when determining whether the mark in question amounts to a well-known mark. Of particular interest is the Assistant Registrar’s ruling on the degree of knowledge, or recognition of the mark in the relevant sector, as one of the factors.
The matter concerned trade mark No. 1151117 ’JOTON’ (word and device) in the name of L.Q Joton Joint Stock Company (the JOTON case). In making the ruling, the Assistant Registrar recognised that the issue is not whether a few people know the mark but whether enough persons know it well enough. A substantial number of persons is required.
There are three basic steps involved in meeting the test: identifying the sector of the population interested in the goods or services to which the mark relates, determining whether the mark is well known within the local jurisdiction as a trade mark belonging to an enterprise with a base in another country, and determining whether those who have the requisite knowledge represent a substantial number of the chosen universe.
The relevant sector
In the JOTON case, the Assistant Registrar relied on the Fincas Taragona case where, the court was required to determine whether the phrase ’well known in a member state’ required that the mark be well known throughout the territory of the member state or just a substantial part of it. The court adopted the WIPO Joint Recommendation concerning the provisions on the protection of well-known trademarks.
The Joint Recommendation states that when determining whether a mark is well known, the relevant sector of the public to be considered should at least include the:
- actual and/or potential consumers of the type of goods and/or services to which the mark applies;
- persons involved in channels of distribution of the type of goods and/or services to which the mark applies; and
- business circles dealing with the type of goods and/or services to which the mark applies.
The Joint Recommendation goes on to state that where a mark is determined to be well known in at least one relevant sector of the public in a member state, it shall be considered to be a well-known mark. However, where a mark is determined to be merely known in at least one relevant sector of the public, the court has the discretion to find it to be a well-known mark.
In order to prove that your mark is well known, you are not required to provide evidence that the mark has been used or registered or that an application for registration has been filed in Kenya or another member state, or that the mark is well known by the public at large in Kenya.
Type of evidence
Using the criteria in the Fincas Tarragona case, the Assistant Registrar in the JOTON case was of the opinion that the applicants in the expungement proceedings did not deserve protection as a well-known mark. This was owing to the fact that no evidence had been adduced to show that a substantial number of persons in the market have awareness or knowledge of the marks, taking into consideration the nature and size of the market. Further no evidence had been submitted as to the degree of knowledge or recognition in the relevant sector, being consumers or distributors of the goods bearing the mark.
In light of the above, in supporting a claim that a trade mark is well known, the alleger should show that its actual and potential consumers are aware of the mark by providing evidence of expenditure on promotion activities, including advertising and publicity in the relevant jurisdiction. Similarly, the alleger should also produce evidence about the use of media readily accessible to its consumers to conduct the promotion activities in respect of the mark such as radio, television and print media like newspapers and magazines.
It is crucial to show that one has an existing and well-developed distribution network in Kenya by providing evidence of engagement of distributors, for example through distribution agreements and sales receipts or invoices for deliveries to distributors. Proving that a mark is known in the business circles dealing with the goods and/or services to which the mark applies may be done by providing evidence of membership in industry trade associations, engagement with distributors as outlined above, especially big box retailers, and featuring in professional or industry-specific publications.
Where possible, to support a claim that a mark is well known, a market survey of the relevant sector of the public should be adduced. However, surveys and witness statements as evidence in trade mark infringement cases have come under criticism as they are often skewed to favour the party providing the evidence and overall do little to augment the judge’s own independent conclusion.
It is important, when arguing that a mark is well known, to present Kenya-centric evidence. This argument may be very difficult to prove. At times the evidence necessary to show that a mark is well known is very sensitive, and the company may not wish to publicise it. In such instances, and where sufficient evidence may not be available, one may instead choose to argue that the reputation of one’s mark will be negatively impacted.
The reputation argument is to the effect that the use of a contested mark will cause the relevant public to believe that there is an economic connection between the owners of the two marks, where no such connection exists. The contested mark would therefore allow its owner to take unfair advantage of the reputation which one has built over many years and be detrimental to its reputation, especially where the goods or services offered under the contested mark are of an inferior quality.
In essence, it is possible for the owner of a trade mark not registered in Kenya to invoke the protection afforded in the Trademarks Act cap 506. However, the mark owner will have to be extremely well prepared and armed with all the requisite evidence to prove that the mark is well known in Kenya and therefore deserving of protection.
 McDonald’s Corp. v Joburgers Drive Inn Restaurant (1997) (1) S.A 1(A)
 Rolex S.A v. Alex Jewellery Pvt & Ors I.a No. 279/2008
 McDonald’s Corp. v Joburgers Drive Inn Restaurant (1997) (1) S.A 1(A)
 Marks & Spencer plc v (1) Interflora Inc & Anor  EWCA Civ 1501