THE BEER BOTTLE BATTLE: AN INTELLECTUAL PROPERTY RIGHTS PERSPECTIVE OF THE KEROCHE AND EABL BEER BOTTLE CONTENTION
This is an amendment to our post titled ‘THE BEER BOTTLE BATTLE: AN INTELLECTUAL PROPERTY RIGHTS PERSPECTIVE OF THE KEROCHE AND EABL BEER BOTTLE CONTENTION’ published on 29th January 2020.
In the words of Benjamin Franklin, beer is proof that God loves us and wants us to be happy. Closer home in Kenya, a dispute has arisen between Keroche and EABL over the use of euro 500ML bottle in packaging beer. According to media reports and a press conference held by the Council of County Owners EABL has been allegedly seeking to, among others, ‘patent’ the 500ml euro brown bottle. The claim was that EABL has engraved its initials on the brown beer bottles that have what can be claimed to be a universal shape. EABL had put up an advertisement informing the public of ownership over the bottles and the crates that were embossed with their trademark; stating that they would institute legal action against anyone found using these bottles. Seemingly in a rejoinder, Keroche issued a notice stating that the exclusive use of the brown bottles was irrational, unreasonable, an abuse of intellectual property, and misuse of dominance.
Importance of trademark rights include setting businesses apart from their competitors. The case between Keroche and EABL is a classic example and illustration of this. EABL and Keroche use trademarks to distinguish their products from each other. Trademarks are recognizable signs and symbols that identify certain products to be from a specific source. Within the auspices of trademarks, the action by EABL of engraving their initials is seemingly an assertion that the bottles with the mark, and albeit the content therein, are associated with them.
The beer bottles in contention are known as the Euro Bottle(s). These 500 ml bottles have a unique shape to them and are often brown in color (example here); and have been used in the packaging of beer. The allegation is that the brewers have ‘patent rights’ or own them. Under Kenyan law patenting would only be possible under the Industrial Property Act, no. 3 of 2001(The Act). The Act provides protection of rights under patents, certificates of utility models, technovation and registration of industrial designs; also known as design patents. Industrial designs/design patents stem from patentable subject matter; and are defined as any composition of lines or colors or any three dimensional form, whether or not associated
with lines or colors; provided that such composition or form gives a special appearance to a product of industry or handicraft and can serve as a pattern for a product of industry or handicraft. They are thus concerned only with the outward appearance (eye appeal) of articles as defined by their shape, configuration, pattern or ornament; whereas patents are concerned with inventions that offer a new technical solution to a problem. In addition, for an industrial design to be registrable it should be new. This means that the design must not have been disclosed to the public, anywhere in the world, by publication in tangible form or, in Kenya, by use or in any other way, prior to the filing date or, where applicable, the priority date of the application for registration. In other words, newness is measured by whether or not that which is to be protected is of public knowledge by the time one is coming to register it for protection; and for it to pass this threshold, it should not have been disclosed before initiating registration.
From the above, the shape of beer bottles can be considered to be subject matter worthy of industrial design protection. This is because of the shape of the bottle. However, when it comes to the requirement of newness, the bottle may not be eligible for protection. The bottle as shaped, has been used universally to package beer and this denies it of the quality of newness, a prerequisite for industrial design protection. This leads to the question of whether engraving is a claim to ownership of the bottle/mark or a case of simple product labeling.
Trademarks are used for branding. In the language of consumers, branding is everything. Section 2 of the Trademarks Act defines a mark to include a distinguishing guise, slogan, device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof whether rendered in two-dimensional or three-dimensional form. The same section goes on to define a distinguishing guise as, in relation to goods, the shape or configuration of containers of the goods. The aim of trademark protection is to prevent unfair competition by protecting the use of a mark that uniquely distinguishes the goods or services of one company from those of another/rival.
Following the definitions in section 2, one can own trademark rights in the shape or configuration of containers of the goods they are selling to consumers. However, in order to be registered a trademark must be distinctive. Distinctiveness of a trademark is dependent on the understanding of the consumers, or at least the persons to whom the sign is addressed. A trademark becomes distinct when it is capable of distinguishing the goods to which it is to be applied from others in the same industry/market. Once a trademark is registered, the owner can
then sue for infringement. In the current dispute between EABL and Keroche, these questions are subject to determination by court.
In conclusion, this case shows the importance of intellectual property rights and even more, the persuasive power of trademarks. The case is still pending a final ruling, however; the High Court Judge directed the beer manufacturers, East African Breweries Ltd and Keroche Breweries, to stop further advertisement on the contested beer bottles until the hearing of the case. This blogger will keep watch on the progress of the case and update this piece accordingly.
 Section 12 of the Trade Marks Act, CAP 506 (Rev 2012)
 See sections 7 and 8 of the Trade Marks Act.