South Africa: Africa Update 2020 – Kenya

New Managing Director of Kipi to be Appointed

On Friday 29 November 2019, Mr Slyvance Sange's tenure as the Managing Director of the Kenya Industrial Property Institute (KIPI) came to an end. Mr Sange was appointed on 31 May 2014, initially in an acting capacity, but later permanently. Adams & Adams appreciated Mr Sange's support in attending the Adams & Adams Africa Network Meeting in 2013 and during our visit to KIPI in 2016.

The Deputy Managing Director of KIPI, Mr John Onyango, has been appointed as Acting Registrar by the Cabinet Secretary for Trade and Industrialisation.

Details about a permanent appointment will be communicated as and when developments occur.

If the shoe fits, wear it

In Bata Brands SA and Bata Shoe Company (Kenya) Limited vs. Umoja Products Limited, the Plaintiffs, Bata Brands SA and Bata Shoe Company (Kenya) Limited, claimed trade in a school shoe with a distinctive design for 15 years in Kenya under the trade mark TOUGHEES. The Plaintiffs sought inter alia, an injunction against the Defendant, Umoja Products Limited, on the grounds it was trading in a shoe bearing an identical or substantially similar design that would likely cause confusion or deception.

The Defendant argued that the Plaintiffs had not acquired any registered design rights under the Industrial Property Act, which legislation is the only law in Kenya that protects industrial designs. Therefore protection was not available for a shoe design under the common law.

The Defendant further argued that even if protection under the Industrial Property Act was available, it was not available in this case as shoes embodying the design had been on the market for 15 years, being the maximum term of protection of a design. The industrial design fell into the public domain.

In addition, the Defendant argued that passing-off was limited to unregistered trade marks and did not extend to designs. It further denied that any confusion would result from the sale of its shoe on the basis that they were sold under the trade mark SHUPAVU.

The Court, however, concluded that an unregistered design could indeed be the subject of passing-off. It accepted that a design, owing to considerable use, could be associated in the minds of the public with the goods to which the design is applied and therefore be distinctive of those goods. Additionally, it accepted that the use by a Defendant of the same design or a substantially similar design in relation to its goods may lead to confusion by misleading members of the public to believe that the Defendant's goods are those of the Plaintiff. The Court determined that the Defendant had not gone to any lengths to indicate those features of its design, which were distinguishable from the Plaintiffs' design and had replicated the Plaintiffs' distinctive design. According to the Court, this amounted to a misrepresentation.

Despite these findings, the Court ultimately gave the Plaintiffs' the boot in relation to the injunction on the grounds that they were unable to prove a likelihood of irreparable harm that would not adequately be compensated by damages. The Court considered that the Defendant had been making use of the same design since 2014, and the Plaintiffs shoe sales had increased between that date and the institution of the suit.

Cross-examination capable in cancellation proceedings in Kenya

In Biostadt India Limited vs. Osho Chemical Industries Limited, Biostadt applied for the expungement of the WOKOZIM trade mark registered in the name of Osho concerning organic foliar fertiliser. However, it is not the cancellation proceedings per se that have broken ground in Kenya, but rather an unusual order for cross-examination of one of the witnesses who had deposed to a statutory declaration in the matter.

As there was a dispute of fact, Osho made an application for the cross-examination of the deponent to Biostadt's many declarations, who was its General Legal Counsel, based in India. The application was opposed on the grounds that it would delay proceedings, amount to a fishing expedition, and cause Biostadt to incur unnecessary additional costs. However, the Registrar of Trade Marks noted that, in terms of Section 54(1) of the Kenyan Trade Marks Act, evidence by way of oral testimony may be given in lieu of, or in addition to, evidence by means of a statutory declaration. Exercising its discretion in favour of Osho, the Registrar decided clarity was required on an issue relevant to the determination of the case and that, given that the issue had been appropriately identified, the cross-examination would not amount to a fishing expedition. The Registrar also felt that the advantages of continuing with the cross-examination outweighed the concerns that Biostadt had regarding the associated costs. Accordingly, the General Legal Counsel of Biostadt has been ordered to attend the hearing of the expungement proceedings in person.

While cross-examination or oral testimony is unlikely to be the norm in proceedings before the Registrar in Kenya, it is worth bearing in mind that, in certain circumstances, it is justifiable and within the discretion of the Registrar to direct that a deponent travels to Kenya to provide oral evidence.

Expungement Application - CAT vs. AOT

In January 2016, Caterpillar Inc. filed an application for the expungement of Kenyan trade mark registration no. 82764 AOT (word & device) in class 25, in the name of Al Imran Investments Limited. The expungement application was based on the AOT & Device mark's confusing similarity to Caterpillar Inc.'s prior, registered and well-known CAT & Design trade mark, and the fact that the mark was being used on lookalike CAT shoes to create confusion.

The matter was not defended, but Caterpillar Inc. was required to file evidence with the Registrar of Trade Marks and argue the issue at a hearing. On the 17th of September 2019, the Registry handed down a favourable decision, ordering the cancellation of the AOT & Device trade mark registration. In its ruling, the Registrar analysed the respective marks and held that they were visually and conceptually similar as both marks contained the letters "A" and "T", as well as a triangle device, which was a dominant component in both marks. Based on the similarity of the marks, as well as the respective goods in relation to which the marks had been registered, the Registrar found that Al Imran Investments Limited did not have a valid legal claim to the AOT & Device mark.

Although the outcome of the case was positive, the Registrar found that insufficient evidence had been furnished to prove that the CAT & Design mark was well-known in Kenya and, therefore, deserving of protection under Section 15A of the Trade Marks Act. In making this finding, the Registrar considered the WIPO Joint Recommendations Concerning Provisions of the Protection of Well-Known Marks, as well as the relevant provisions of the Trade Marks Act, and found that the requirements needed to prove a mark is well-known had not been met. However, this did not preclude a finding that the AOT & Device mark ought to be removed from the Register.

The Registrar also commented on the requirements for the authentication of evidence filed and stated explicitly that every annexure of a statutory declaration must be "properly sealed under the seal of the Commissioner as required by law", and that failing to do so the evidence may be declared inadmissible.

Anti-counterfeiting training

In addition to having travelled to Kenya for a number of matters specific instances, during August 2019, we travelled to Nairobi and Mombasa to conduct Brand Identification Training with members of the ACA in Nairobi and Mombasa.

A number of ACA members from other towns travelled to Nairobi and Mombasa respectively to attend these sessions. Both sessions were very interactive, with the members raising various points and requesting assistance with specific instances. The Brand Identification Training was very well received by the attendees and numerous additional requests have been made by the ACA to conduct further trainings of this nature.

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