Kenya: Trade mark applications can be opposed on the basis of unregistered marks

The recent Kenyan High Court decision of Fibrelink Limited v Star Television Productions Limited is not always easy to follow. But it is a welcome judgment because it confirms that it is possible to oppose a trade mark application on the basis of a common law or unregistered trade mark. This is important because courts in another African country, Zambia, have taken a different view on this.

The facts in the Kenyan case were that Fibrelink applied to register the trade mark Star Plus in class 38 for telecommunications services, and Star Television opposed this application on the basis of earlier use of this trade mark, seemingly for the same services (the judgment is not entirely clear on this). The judge held that Section 14 of the Kenyan Trade Marks Act allows for such an opposition. This section reads as follows:

‘No person shall register as a trade mark or part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice, or would be contrary to law or morality, or any scandalous design.’

In our view this decision is correct. What worries us slightly, however, is that this judgment might be interpreted as suggesting that the mere fact that an identical or very similar unregistered trade mark exists is sufficient, as long as there has been a modicum of use of the earlier trade mark. The court certainly accepted that the prior use had not been extensive in this case (there is mention of 10,000 subscribers), and certainly would not have qualified for protection under the well-known marks section. There are a number of statements in the judgment that are a bit unclear; here are two examples:

‘In my understanding, when a trade mark was so identical or similar to another one, which was already in use, the possibility of deceit or confusion would be a reality.’

‘It is not the extent to which the mark had penetrated the market which would determine whether or not the mark could be confused with another mark which was identical or similar with the respondent’s mark... the similarity of trade marks is what can lead to deception or confusion or both.’

A reasonable interpretation of Section 14 is that it deals with a passing off scenario, in other words, one where there is an unregistered trade mark that has been used extensively and acquired a reputation, and an application to register the same or a similar trade mark for goods or services that are sufficiently similar for confusion to arise. This does not necessarily come across in the judgment.

Date published: 23 March 2018
Author: Spoor & Fisher

Tags: Kenya trade mark oppositions Kenyan High Court