The image by Chakde Biz

According to section 2 of the Trade Marks Act (TMA) of Kenya, trademark means a mark used to distinguish goods or services. The mark can be a device, name, word, letter, numeral or any combination whether 3D or 2D (list not exhaustive).¹ Margreth Barrett identifies three main qualities developed over the years that help to distinguish trademarks.² The first is perception. The consumers of a specific good or service must be able to perceive the mark with any of the five senses, that is in the form of sound, smell, taste, feel, or sight. Secondly, there must be a necessary mental connection between the trademark and the good or service to the point that the thought of the mark or the good automatically leads to the thought of the user of the mark. Lastly, the mark must be distinct and have an innovative commercial impression in the market.

Trademarks do not necessarily need to be registered before they can be protected against any infringement. The unregistered trademarks can be protected in two ways. These include protection under the tort of passing off or the protection against infringement that applies to ‘well-known’ trademarks according to section 5 and section 15A of the TMA respectively. This enables unregistered trademarks to share a few benefits with those that are formally registered.

Unregistered, but not well-known, trademarks are not accorded the protection of suing for infringement, for example, suing for identical marks, and the proprietors of such are not entitled to recover damages. They are however allowed rights of action against any person for passing off.³

Passing off is defined as ‘a right of trader to bring a legal action for protection of goodwill’.⁴ Passing off is not a statutory right. However, it is a common-law tort used to enforce, for example, trademark rights.⁵ It discourages an entity from passing off goods or services as that which belongs to another entity, under a mark.

A well-known trademark are protected statutorily and by international conventions against infringement;⁶ whether or not they are registered in Kenya.⁷ Proprietors are entitled to respond to infringement through, for example, injunctions.⁸ The High Court of Kenya has echoed the same sentiment and furthered the protection of a well-known trademark when it upheld the rejection of registration of a trademark on the ground that it is identical to a well-known trademark. Hence the trademark’s subsequent registration by another party could constitute an infringement on the right of the original unregistered proprietor.⁹

About a well-known trademark

Currently Kenya has no specific definition of a well-known trademark. It is noted that neither the TRIPS Agreement nor the Paris Convention defines the same,¹⁰ even the proposed IP Bill does not define it. However, a literal interpretation qualifies it as notorious, famous, widely recognised, etc.¹¹

Amongst the pertinent questions in protecting a well-known trademark is its notoriety. It is what determines whether or not an unregistered well-known trademark merits legal protection like, prohibition of registration of identical and resembling trademarks under section 15 of the TMA. The TMA is not elaborate, and the courts are indecisive on the threshold required of an alleging party in proving notoriety.

The legislative provisions

The TMA only provides three disjunctive conditions that do not necessarily help to prove notoriety but helps to establish foundations for other important elements needed when proving the notoriety of a trademark. These conditions are laid down in Section 15A of the Trade Marks Act, the proprietor must have: nationality belonging to a convention country; or be domiciled in a convention country, or have an effective industrial or commercial establishment in a convention country. According to section 2 of the TMA, a convention country refers to ‘a country, other than Kenya, that is party to the Paris Convention’. These conditions identify who can claim to have a well-known mark in Kenya. The same provisions are contained under section 147 of the Intellectual Property Bill of Kenya 2020 which proposes to repeal the TMA. To this extent, it can rightly be argued that the lack of an explicit definition of a well-known trademark is one of the potential shortcomings of the proposed Bill.

Lessons from Courts

Since the answer to the concern is not on statute, we turn to the court for guidance. In Weetabix v Manji Food Industries.¹² The plaintiff sought an injunction against the respondents’ use of the mark ‘OATBIX’. The issue was the use of the suffix (bix) which the plaintiff has had a reputation of using in its various marks on their products. The plaintiff was the proprietor of various trademarks – bananabix, minibix, fruitbix, chocobix. The plaintiff averred that they are a well-known mark, to that effect, the Court took into consideration that Weetabix had been in existence since 1932 and has been operating in Kenya since 1978. The two factors considered were (i) how long Weetabix had been operating for and (ii) how long it was operating in Kenya. Summative, timelines and duration of existence was informative in this case.

The Court did not delve deeper into other factors as Weetabix had certificates of registration for their trade marks. However, proving notoriety by evidencing certificates of registration in countries other than Kenya is insufficient to evidence that the trademark is well-known.¹³ This is logical since a trademark is protected in Kenya either as a registered trademark in Kenya under the TMA or a well-known trademark in Kenya.

This case is supplemented by the reasoning in Sony Corporation v Sony Holding Limited.¹⁴ where the respondents attempted to register the name ‘Sony Holdings’. The Appellants objected on the grounds of similarity and protection for being a well-known trademark. The Court was alive to the multiple factors that must inform such protection. The Court agreed with the assistant registrar that the following were relevant (i) The duration, extent and geographic area of the use of the Mark ‘Sony’. (ii) The duration and geographic area of any Registration of the Mark ‘Sony’. (iii) The duration, extent and geographic area of any promotion of the Mark. (iv) The degree of recognition of the Mark ‘Sony’ in Kenya.

To this effect, the Appellants provided evidence that their mark had been in use since 1958 and internationally recognized. This was held to be insufficient proof of local notoriety. The appellants provided evidence that their brand participated in global sporting events and was accessed by millions of Kenya. The court viewed this as insufficient and a mere assumption that Kenyans saw their mark via global events. The Appellants also produced financial reports with regards to sales of their products worldwide but none specifically relating to the region of Kenya. The Court noted that Sony was indeed a global brand but found that the appellants had not proved their notoriety in the specific region of Kenya, which is their onus of proof to discharge.

This judgement though instructive leaves out several questions unanswered. What type of evidence would Sony need to provide to prove that it was well-known to Kenyans? Would it be purely empirical? What would be the required degree of recognition?

In a 2017 case, Fibrelink Limited v Star Television Productions Ltd, the court attempted to establish a threshold for proving notoriety. It reasoned that the respondent had over 10,000 subscribers in Kenya by 2009. Regardless, it held that this is not a substantial number when compared to the overall population of Kenya. Upon this backdrop, the court upheld the decision of the Registrar of Trade Marks on grounds of ‘use’—that using the 10,000 subscribers, the respondent has proved that it has used and continues to use the mark. From this perspective, the proof of notoriety seems to be neglected or lowered to the proof of use. If this is the case, then the protection of a well-known trademark and the distinction of the same from other unregistered trademarks is further problematised. This is since the proof of use is most apt for the tort of passing off under common law.

The question of sufficient proof for notoriety have been addressed in other jurisdictions and it is important to highlight one of them. In Germany, Courts used a minimum percentage of the relevant property as an indicator.¹⁵ Though strict, it provides a cut-off. The threshold is set at 50 per cent of the relevant population. The data used to execute this assessment is from conducted market surveys. This is restrictive as it excludes other factors such as the duration of use, geographical coverage and volume provide other aspects to notoriety. Also, this appears rigid and may go against the interest of SMEs which may not meet the threshold. On the bright side, this helps to clarify a huge aspect of the threshold that is required when proving notoriety by way of standardisation.

Proving the existence of a Well-Known Trademark

The advantages of registration of trademarks are enormous. However, discussing them is beyond the remit of this article. Likewise, there are some incentives for trademarks that are not registered but are well-known. One is that they are protected without being required to undergo the technical process of registration or renewing registration after a decade as contained under section 23 of the TMA. Thus, the following seven conditions observed thus far are instructive to the proof of a well-known trademark in Kenya.

1. The trademark must be used in trade

2. The trademark must be locally well-known or used.

As seen in the Sony Co-operation v Sony Holdings Limited, The Court buttressed the fact that trademarks are a territorial concept. A trademark being well-known in the United States does not mean it is well-known in Kenya.

3. The bearer of the mark must be a national of a convention country, be domiciled in a convention country or have an effective industrial or commercial establishment in a convention country.

4. It is irrelevant whether the court knows of the mark, as it is upon the plaintiff to sufficiently prove notoriety.

This was seen in the Sony Co-operation v Sony Holding Limited case where the Court was aware of the brand and trademark Sony. However, the Appellants did not provide sufficient evidence to prove that it was well-known within the locality of Kenya.

5. Certificate of registration in another jurisdiction is inadequate to prove notoriety in Kenya.

This is indicative of Trade Marks as a territorial concept, In the Rolson case, the court rejected a certificate of registration from India to prove that the trademark in question was well-known in Kenya.

6. The proof must be factual as opposed to mere speculation or assumption.

In the Sony case, the Appellant ‘Sony’ provided evidence to show the Court that its trademark was seen in international sporting events as well as financial sales that showed sales to various regions. The Court found that such evidence was not cogent enough to be indicative of Kenyans knowing Sony’s trademark. The evidence was assumptive in the Court’s view.

7. The trademark must be likely to cause confusion. Similar trademarks may be registered if they deal in differing goods/services.¹⁶

Concluding observations

There is currently no conclusive literature or jurisprudence on what amounts to sufficient proof of notoriety for a well-known trademark. This seems to vary by case as the courts have the discretion to make practical determinations on the evidence presented. As we expect the courts and the relevant stakeholders to continue to unfold the interpretative requirements for a well-known trademark, it is advised that proprietors register their trademarks as it is a more lucid process to follow. The unregistered nature of some trademarks somewhat poses a threat to the efforts to formalise Intellectual Property in Kenya as it affects the results of searches in the Trade Marks Register. The Kenya Industrial Property Institute rightly noted that the use of unregistered trademarks can lead to a lengthy and expensive legal process.