Holders of registered trademarks in Kenya are likely to be interested in a Kenyan High Court decision that was issued earlier this year which should assist in dealing with situations where closely similar or identical business names appear on the country's two different registers.
The court's decision clarifies the legal position in respect of conflicting trademark and business name rights. This conflict has arisen primarily because the trademarks registry and the business names registry are not interlinked. As such, the business names registry does not check whether there are identical or closely similar trademarks before approving the registration of business names. Similarly, the Kenya Industrial Property Institute does not check whether there are identical or closely similar business names on the register while examining trademark applications.
As a result, there have been instances where registered trademarks and registered business names have been held by different persons. This has created the possibility of confusion arising in the marketplace, especially where holders of the respective rights trade in similar goods or services.
It is also worth noting that the Trademarks Act stipulates that the registration of a person as the proprietor of a trademark, if valid, gives that person the exclusive right to use the trademark in relation to those goods or services. Registration of business names that are closely similar or identical to registered trademarks therefore significantly waters down the statutory rights bestowed on the holders of registered trademarks in Kenya.
The recent court judgment goes some way towards bolstering those rights.
Facts
In Landor LLC v Wagude t/a Landor & Associates (2019), the plaintiffs had sought a permanent injunction restraining the defendants from trading, advertising, marketing and/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 first plaintiff, Landor LLC, had been founded by Walter Landor. The second plaintiff, WPP Luxembourg Gamma Sarl, registered the business Landor Associates, as well as the trademark LANDOR in Kenya in 2010. On the other hand, the third defendant, Lui O Wagude, had registered the business name Landor and Associates in November 2009 and subsequently registered the company Landor and Associates Limited in January 2014.
It is worth noting that there was a certain commonality: the third defendant was a former general manager of a subsidiary of WPP Scan Group Limited (WPP). The rst plaintiff, Landor LLC, is also a subsidiary of WPP.
The plaintiffs' position was that the defendants had by their actions created and continued to create confusion in the market, and that they were taking unfair commercial advantage of the goodwill and reputation of the plaintiffs' trademarks. The defendants denied these allegations, pleading the prior use defence and indicating that the rst defendant had been carrying out business under the name of Landor and Associates since 28 November 2009, when the business name was registered.
Decision
The court found that there had been infringement of the second plaintiff's trademark LANDOR and that any prior use of the mark by the defendants was not bona fide since it was very likely that the third defendant was aware that WPP was using the name Landor. The court found that the second defendant's name could not be allowed to stand and proceeded to order this defendant to change its name.
Comment
This decision is no doubt a welcome relief for holders of registered trademarks, especially in situations where there are closely similar or identical business names on the two registers.
*This article was first published on the World Trademark Review on 2 May 2019.
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