It is common knowledge that for you to legally conduct business in Kenya, you have to register either your business or company name. Another form of legal brand protection is by registration of a trademark at the Registrar of Trademarks. Before your trademark is registered, the Registrar conducts an official search to prove that the mark you seek to register is not the same or does not have close likeness to another registered mark.
Sometimes, this search raises issues such as an instance where your registered company or business name is already registered as a trademark for another owner. In such a scenario, the question that arises is which registration will take precedence? Is it the registered company name or the registered trademark?
This question was answered by the High Court of Kenya in Landor LLC and WPP Luxembourg Gamma Sarl v Wagude Lui t/a Landor & Associates & 2 Others (2019) eKLR. In this matter, the Plaintiffs, international organizations in the business of advertising and marketing, registered the trademark of ‘Landor’ in Kenya in 2010. The Plaintiffs later discovered that the Defendants were trading in the name and style of ‘Landor and Associates’. Upon being sued, it was an important element of the Defendants’ case that they registered their company name in 2009 – way before the Plaintiffs registered their Trade Mark in Kenya.
The main issue for determination by the court was whether the Defendants had infringed upon the Plaintiff’s registered Trade Mark. In determining the matter, the Court started by setting down the conditions to be met in an action for infringement of a Trade Mark under Section 7 of the Trade Marks Act as:
- The Plaintiff must be the registered proprietor of the Trade Mark.
This can easily be proved through production of a certificate of registration of a Trade Mark.
- The alleged infringement must be a mark identical which or so nearly resembles that of the registered mark so as to likely deceive or cause confusion in the course of trade or in connection with provision of the services in respect of which it is registered.
The Court in this regard looks at the common feature in the two registered names. Where the common feature is distinctive and dominant marks, then the two names resemble. In this scenario, LANDOR was the distinctive and dominant mark, and hence the names were held to be similar.
The Courts further interrogates whether the impugned mark is likely to deceive or cause confusion. What is vital on this limb is not actual deception or confusion, but that the confusion or deception is likely. This can be proved by looking at the services provided by the two parties. On this end, the Defendants provided branding services, closely similar to the Plaintiff’s services. Therefore, the Court held that this was likely to deceive the public on connection or co-relation of the two entities.
- The use of the mark is without the consent or authority of the proprietor.
- The use of the mark is such that it is likely to cause injury or prejudice to the proprietor/licensee of the Trade Mark.
Finally, the Court looked at the allegation by the Defendants that since they registered their business name before the Plaintiffs registered their Trade Mark in Kenya, they enjoyed the priority of protection guaranteed under Section 10 of the Trade Marks Act.
In this regard, the Court stated that protection arising from the defence of Prior Use under Section 10 of the Trade Marks Act is only guaranteed where the use is bonafide, honest and continuous. Where a Defendant registered the mark for ulterior motives and in bad faith, then the defence must fail. The Defendants’ defence of prior use of the ‘Landor and Associates’ Trade Mark failed since the Defendant, having been previously employed by the Plaintiff, registered the business name to defeat any subsequent registration by the Plaintiffs – the true proprietors of the Trade Mark.
The upshot of this decision was that the Court laid down the elements of an action of infringement of a trademark as pronounced above. Therefore, Claimants are expected to prove those elements in order to succeed in such a claim. Furthermore, the Court defined the confines of the defence of prior use under the Trade Marks Act. As such, priority of registration as a defence can only succeed upon proof that the use was bonafide, honest and continuous.