What businesses should do to avoid trademark disputes

The number of Kenyan businesses involved in trademark litigation has increased recently.

The recent ruling by High Court Justice Njoki Mwangi in a case brought by Buupass Kenya Limited against Buspass Kenya Limited emphasises the value of safeguarding intellectual property rights and the legal nuances surrounding trademark disputes in Kenya.

After losing a trademark infringement case, the ticketing business Buspass Kenya Limited was ordered to alter its name and relinquish any profits it may have received.

Trademarks serve to inform consumers about the origins of goods and services (also known as “designations of origin”); the expected quality of goods and services; that these goods and services are not produced by rival companies.

There are 45 separate trademark clauses, with 35 covering goods and 10 covering services.

In an increasingly competitive world, it is critical to ensure that the specifications you need to protect are correctly defined, neither too broad nor too specific. 

Here is what is registrable: word marks; figurative marks; shape marks; position marks; pattern marks; colour marks; sound marks; motion mark; multimedia marks and hologram marks.

As a result of trademarks, certain brands are now more in demand due to the positive perception and goodwill they cultivate among customers.

Many times, a large portion of a company’s marketing budget goes into ensuring that a certain brand is known for grandeur and quality. Thus, for example, the goods or services might be associated with individuals or principles that the general public values. 

This allows the firm to demand a higher price for its products. Accordingly, it is vital for businesses to be able to use their unique brand components to differentiate themselves from rivals and prevent others from delivering comparable products or services.

As you can see from the above, it’s critical that you take prompt and cautious action if you think your trademark is being infringed.

But first, what exactly constitutes trademark infringement?

Trademark infringement is a violation of the exclusive rights attached to a trademark or service mark in connection with goods and/or services without the permission of the trademark owner or any licensees, which may cause confusion, deception, or misunderstanding about the actual company from which a product or service originated. 

And the legal threshold is “likelihood of confusion”. To be more explicit, the use of a trademark in connection with the sale of a thing constitutes infringement if it is likely to confuse consumers as to the origin of the products.

When determining whether consumers are likely to be confused, courts typically consider the strength of the mark, the proximity of the products, the similarity of the marks, evidence of actual confusion, the similarity of marketing channels used, the degree of caution exercised by the typical purchaser, and the infringer’s intent.

In addition to infringement, trademark owners can sue for trademark dilution. Trademark dilution is defined as the unlawful use and/or application for a trademark that has the potential to undermine or impair a well-known brand.

Trademark dilution protects marks that are so well-known, highly recognised, or renowned that governments have deemed them worthy of protection regardless of whether their unlawful use is likely to cause consumer confusion.

However, keep in mind that trademark dilution and trademark infringement are not synonymous despite the fact that trademark owners frequently allege both dilution and infringement while enforcing well-known trademark rights.

Additionally, dilution is frequently classified into several categories, the most prevalent being blurring, tarnishing, passing off, contributing passing off, reverse passing off, and misappropriation. 

Blurring happens when the strength of the mark is weakened by its connection with dissimilar goods, for example, unauthorised use of TUSKER as a fragrance brand may not be trademark infringement, but rather trademark dilution, despite the fact that fragrance and beer are so unrelated that customers are unlikely to assume Tusker scent originates from the well-known beer company. Tarnishment happens when a mark is associated with poor or unsightly products or services.

Passing off on the other hand happens when one entity attempts to pass off its product as another’s. So, for example, making computers and claiming that they are created by Apple, but reverse passing off happens when one company tries to pass off another entity’s goods as its own, such as taking an Apple computer, removing the label, and applying a new label.

With that stated, if you possess a trademark, it is vital to ensure that your registered mark is suitable for purpose, unique, unlikely to result in litigation from others, and enforceable if someone else begins to use anything similar.  

The writer is a Partner at Sisule and Associates LLP.