By Cynthia Nzuki

You walk into a supermarket thirsting for a cold orange flavoured drink; on getting to the drinks aisle you are faced with a difficult choice of what packaging to take off the shelf as there are various options; effortlessly, you reach out for the 500ml can of Fanta, a product of Coca Cola Company. If asked why that was your choice, your most likely answer would be “I know the brand” or “I trust it”.

In the world of drinks and beverages, Coca-Cola is known to be one of the most, if not the most, popular brand. Bringing it home, Safaricom has created a brand for its services within the telecommunications industry. Names such as Apple & Samsung; Gucci & Ray ban; Delmonte & Brookside; Bata & Nike; Citizen TV & NTV; etc are brands in the same industry but owned by different owners. The names are used in the same industry with the intention of differentiating the goods and services offered by the different traders. They are brands and, in every industry, there are leading brands.

So what is branding? Branding is the marketing practice of creating a name, symbol or design that identifies and differentiates a product from other products.¹ Section 2 of the Trade Marks Act defines a trademark as a mark used or proposed to be used for the purpose of indicating a connection in the course of trade between the goods or services and a person having the right to use the mark; or to distinguish the goods or services in which the mark is used from the same kind of goods or services connected with a particular person in the course of trade. Branding is governed by trademark law, which confers exclusive rights to an owner of a registered mark, to exploit that mark for a period of time and subject to the conditions entered in the register of Trademarks.

Trademark law is more consumer centered. This premise assumes that consumers are more likely to go for products and services that they trust. Simply put, consumers buy into the goodwill of a business, product or service, and this is manifested through branding/trademarking making the identification of these products or services easier. Many businesses therefore consider branding/ trademarking an important element of their profitability. Trademarks law enables businesses to achieve this by granting them exclusive rights over a mark for a period. It therefore follows that any use of a mark that is similar or identical to a registered mark would amount to infringement. It is quite uncommon for an enterprise to encounter an identical or confusingly similar mark to their trademark, but such is possible.² Whereas such uses would ordinarily amount to infringement, cases of concurrent and honest use are often exempted.

This issue then raises the question as to whether similar marks can and should coexist and be used concurrently in the same market. Can two different traders use trademarks that resemble each other against the same goods or services in the same market?

What is honest and concurrent use?

The Trademarks Act prohibits the registration of similar or identical trademarks in the name of different owners which would be in relation to the same class of goods and services. This however does not apply when there is honest and concurrent use of a trademark that is similar or identical to an existing trademark. To this effect, Section 15 (2) of the Trade Mark Act provides that,

In case of honest concurrent use, …………………. the court or the Registrar may permit the registration of trade marks that are identical or nearly resemble each other in respect of the same goods or description of goods by more than one proprietor subject to such conditions and limitations, if any, as the court or the Registrar may think it right to impose.

Honest concurrent use of trademarks is a common law doctrine which allows parties who had previously honestly used their marks although resembling one another and in relation to the same goods, to co-exist in the same market. Such use must be honest or innocent and must have not caused confusion to the customers before. Recently the High Court in Nairobi held that once an opponent proves that there are similarities between an existing trademark and that of an applicant, the burden of proving that the two can co-exist shifts to the applicant. The applicant can do this by showing that previously, the two trademarks have been in the market peacefully and without causing confusion in the eyes of the consumers. In this case³, the Court held that it was erroneous for the Registrar of Trademarks to rely on information which was not brought before her by the applicant who had the burden of proof even though this information was within her knowledge.

In setting up a two stage analysis of whether there has been honest concurrent use, the court in C.S.S. Jewellery Company Limited v The Registrar of Trade Marks (here) stated that one has to determine:

1. whether there has been an honest concurrent use of the mark applied for and the earlier mark; and
2. if the answer to (1) is in the affirmative, whether after considering all relevant circumstances, including public interest, the discretion should be exercised to accept the application for registration of the mark, despite the fact that the use of the mark in relation to the goods or services in question is likely to cause confusion on the part of the public.

The High Court in Kenya in Sony Corporation v Sony Holding Limited⁴ adopted the test laid down in the .Re Alex Pirie & Sons Ltd’s Application RPC case (here)in determining whether two trademarks can coexist in the market. The test includes:

1. The extent of use in time and quantity and area of trade;
2. The degree of confusion likely to ensue from the resemblance of the marks, which is, to a large extent, indicative of the measure of public inconvenience;
3. The honesty of the concurrent use;
4. Whether any instances of confusion have been proved;
5. The relative inconvenience which would be caused if the mark in suit was registered, subject in necessary to any conditions and limitations.

For the doctrine of honest concurrent use to be invoked, the applicant must fundamentally prove that they have actually used the proposed mark in the market; that such use has been honest and in the course of trade. Where instances of bad faith⁵ inferred from the behavior of the applicant or where the trademark has been put in use, but such use has caused confusion in the market, the court’s discretion in effecting this doctrine is limited.

Conclusion

Concurrent use of similar marks in the same market for similar goods is possible and some argue it is good for competition purposes in the market⁶. However, when the above test is applied, the use may promote competition while at the same time ensuring honest business transactions.

So yes, we can share trademarks, but the sharing must be done in good faith, honest, concurrent and must not confuse our customers.

1 https://www.entrepreneur.com/encyclopedia/branding

2 Tamara Nanayakkara, ‘Independent Existence or Coexistence of Identical or Similar Trademarks’, 1

3 L.A Group (PYT) Ltd v Wardrobe Collections [2019] eKLR

4 Sony Corporation v Sony Holding Limited [2018] eKLR

5 See Agility Logistics Limited & 2 Others vs Agility Logistics Kenya Limited [2012] EKLR, where the court held that it would not allow the continued registration of a company whose registration was equal to passing off action.

6 Katerina Shaw, Likelihood of Coexistence: A Comparative Analysis of the Interplay between European Trademark Law and Free Competition, 18 U. Balt. Intell. Prop. L.J. 51 (2009).