SECTION 14 OF THE KENYAN TRADE MARKS ACT IS ENFORCEABLE EVEN IN THE ABSENCE OF A REGISTERED TRADE MARK

In Fibrelink Limited v Star Television Productions Limited, the High Court of Kenya heard an appeal against an earlier decision of the Registrar of Trade Marks in an opposition by the Respondent against the Appellant’s STAR PLUS trade mark in class 38 for “Telecommunications Services”. The Respondent was successful in the opposition.

The opposition was based on the Respondent’s rights in the unregistered mark STAR PLUS, which it had used in Kenya prior to the application for registration of the Appellant’s STAR PLUS mark. The Respondent also pleaded that its mark was well-known in Kenya but was unable to prove this in the opposition.

The Appellant’s grounds of appeal included that the Respondent lacked locus standi in the proceedings as it did not have proprietary rights in the mark STAR PLUS which could only have been acquired through registration or if the mark was well-known in Kenya.

The main issue on appeal, which followed the argument above, was whether the Registrar had misapplied the provisions of Section 14 of the Kenyan Trade Marks Act (“the Act”) to the opposition. In the Appellant’s view, the Registrar was required to consider the opposition in line with the provisions of Section 15(1) of the Act, which section prohibits the registration of a mark that is identical to or nearly resembles an earlier registered mark in relation to the same goods or description of goods for which that mark is registered. However, this Section was not pleaded by the Respondent.

Section 14 of the Act prohibits the registration of a mark, the use of which would be likely to deceive or cause confusion.

The High Court found that the Registrar had not erred in applying the provisions of Section 14 to the case. It held that the Section does not make mention of identical or similar marks, but when the marks to be compared are identical or similar, confusion or deception is a reality and it would be against public policy to allow the registration of the latter mark.

The Court went further in finding that reliance on Section 14 does not require a trade mark to be well-known in Kenya, nor is it a requirement that the envisaged confusion or deception be widespread. The number of people likely to be confused or deceived also does not affect the discretion of the Registrar to refuse the registration of a mark based on Section 14 of the Act.

While this is good news for proprietors, if a mark is in use in Kenya, it is far preferable to apply to register it than assume that your earlier rights will carry you home. Registration has several benefits, including perpetual protection of rights, provided that registrations are timeously renewed. A registration could also constitute a defence to several claims and, in certain circumstances, negates the need to adduce copious evidence of one’s rights in a trade mark.

KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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