Prior Use and Legality in Trade Mark Registration
- Victor Nzomo |
- January 4, 2016 |
Earlier this year, this blogger reported here this ruling: In the Matter of Trade Mark No. KE/T/2010/67586 “KENYA BOYS CHOIR” (WORDS) in Classes 16 and 41 in the Name of Joseph Muyale Inzai and Expungement Proceedings Thereto by Kenyan Boys Choir by the Assistant Registrar of Trade Marks at the Kenya Industrial Property Institute (KIPI).
In this case, one Joseph Muyale Inzai filed an application to register his trade mark “KENYA BOYS CHOIR” (WORDS) before the Registrar of Trade Marks in classes 16 and 41 of the Nice Classification. The mark was approved, published and thereafter entered in the Register of Trade Marks in 2010.
In the same year, Members of a choir known as Kenyan Boys Choir obtained registration of their business names “THE KENYAN BOYS CHOIR” and “THE BOYS CHOIR OF KENYA” under the Registration of Business Names Act. These Members of the Kenyan Boys Choir filed an application for expungement of Inzai’s mark claiming that they were aggrieved by the entry of the mark for various reasons including that they were the true owners of the mark: “KENYAN BOYS CHOIR” which was virtually identical to the mark in question: “KENYA BOYS CHOIR”. The Registrar ruled in favour of the Choir members in addition to an award of costs. The Registrar found that Inzai had no valid and legal claim to the mark for the reason that his ownership of the mark was not sufficiently substantiated as required by law.
Recently, Inzai filed an appeal in the High Court asking the Court to review and set aside the decision made by the Registrar of Trademarks, particularly the order of rectification of the Register of Trade Marks, by expunging the trade mark number KE/T/2010/67586, by the name “KENYA BOYS CHOIR”. In a recent ruling in the case of Joseph Muyale Inzai v Henry Wanjala, Sylvester Matete Makobi, Cliff Njora Njuguna,Masambaya Fredrick Ndukwe And Geoffrey Sauke Together T/A Kenya Boys Choir & another  eKLR, the court ordered that there shall be a stay of the order to expunge Inzai’s trade mark from the Register until the appeal is heard and determined. However, the court also made a further order that during the period before the determination of the appeal, Inzai will not be permitted to use his trade mark “KENYA BOYS CHOIR”.
In arriving at this ruling, the court stated as follows:
“…from the issues canvassed before me, it is evident that the Applicant [Inzai] has serious concerns regarding the determination by the Registrar of Trade Marks. The issues he has raised are not of a trivial nature, nor can they be simply wished away. The matters are definitely arguable. In the circumstances, if the registered Trade Mark was expunged from the Register before the appeal was determined, the said appeal may well have been rendered nugatory. On the other hand, if the trade mark is retained on the Register, it may give to the Applicant, the requisite authority to continue using it. If the Applicant went about putting to use the trade mark “KENYA BOYS CHOIR” at the same time as the Respondents [Members of Kenyan Boys Choir] were using their registered Trade Names “KENYAN BOYS CHOIR” and “BOYS CHOIR OF KENYA”, there would be a high probability of confusion and conflict between the parties. Therefore, it is important that this court should take steps to limit the possibility of the confusion and conflict.”
A copy of the full ruling is available here.