Kenya: Trade mark applications can be opposed on the basis of unregistered marks
The recent Kenyan High Court decision of Fibrelink Limited v Star Television Productions Limited is important. This is because it confirms that it is possible to oppose a trade mark application in Kenya on the basis of a common law or unregistered mark. The basis for such an opposition will be Section 14 of the Kenyan Trade Marks Act, which reads as follows: “No person shall register as a trade mark or part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice, or would be contrary to law or morality, or any scandalous design.”
The reason this is important is because the courts in another African country, Zambia, have come to the opposite conclusion, despite the fact that Zambian trade mark legislation has a provision that is identical to Section 14. Courts in Zambia have adopted the view that an opposition must be founded on a registered trade mark. In the 2012 case of DH Brothers Industries (Pty) Ltd v Olivine Industries (Pty) Ltd the court said that "the law in the Trademarks Act does not offer any protection to an unregistered trade mark." In the 2017 case of Johnson and Johnson v Aardash Pharma Limited the court rejected an opposition based on extensive use of an unregistered trade mark because "the purpose of the Act is the registration of marks… anything else is incidental thereto."
As welcome as the Kenyan decision is, it is perhaps unfortunate that it is not as clear as it might be on the issue of how extensive the use of the unregistered mark must be, and whether the use must be in relation to goods or services that are similar to those covered by the pending application.
OAPI: changes afoot
It is well known that there has been considerable controversy surrounding the African Organisation for Intellectual Property's (OAPI) adoption of the Madrid Protocol. The controversy relates to the fact that OAPI chose to do this by way of a resolution of its Administrative Council, rather than by way of an amendment of the document that established OAPI, the Bangui Agreement. A number of OAPI specialists feel that as a result, international registrations designating OAPI are neither valid nor enforceable. This issue has not yet come before a court.
When the issue of OAPI's ratification was raging fiercely in 2015, lawyers who were critical of the decision to bypass the more onerous procedure formed an association called Collectif des Conseils en Proprieté Industrielle. These lawyers were vocal in their criticisms and what they said stung, so much so that OAPI leadership suspended two OAPI lawyers who were part of the group, Christian Dudieu Djomba and Judith Samantha Tchimmoe, which meant that they could no longer represent clients before OAPI.
OAPI's ratification of the Madrid Protocol and the organisation's drastic response to the criticism were very much linked with the then director general of the organisation, Paulin Edou Edou. In July 2017 Paulin Edou Edou was replaced as director general by Denis Loukou Bohoussou. From the very outset there was talk of change.
We have seen two clear examples of this change recently. First, OAPI High Commission of Appeal has nullified the decision suspending the two lawyers, which means that they can now once again represent clients before OAPI. Secondly, Paulin Edou Edou's decision to sign his own accreditation as an OAPI agent (something that is specifically prohibited) has been reversed.
Whether or not this change of direction will eventually lead to a reassessment of OAPI's ratification of the Madrid Protocol remains to be seen.
Wayne Meiring |
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