The issue of well-known marks has long been a thorny one in Kenya. A Kenyan court previously held that Sony was not a well-known mark in Kenya – a decision that surprised many.
In that case, the court applied a very strict test. The judge, for example, held that fame or repute acquired through sponsorship of major international sporting events required proof of the fact that people in Kenya had actually watched those events.
In a recent Kenyan Registry ruling known as Joton the Registrar said that when it comes to well-known marks three basic steps are required:
- To identify the sector of the population interested in the goods or services to which the mark relates
- To determine whether the mark is well-known in the local jurisdiction as a trade mark belonging to an enterprise with a base in another country
- To determine whether those who have the requisite knowledge represent a substantial number of the chosen universe
In terms of identifying the relevant sector of the population, the Registry said that the World Intellectual Property Organisation (WIPO) Joint Recommendations should be applied. In other words, the following factors need to be considered:
- The actual and/or potential consumers of the type of goods or services to which the marks applies
- The persons involved in the channels of distribution for the type of goods or services to which the mark applies
- The business circles dealing with the type of goods and/or services to which the mark applies
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