Ticketing firm Buspass ordered to change name for trademark infringement

A bus ticketing company has been ordered to change its name and surrender profits it may have gotten after it was sued and lost a trademark infringement case.

Justice Njoki Mwangi delivered the ruling in a case filed by Buupass Kenya Limited against Buspass Kenya Limited.

Buupass wanted Sh10 million in damages.

Justice Mwangi also barred Buspass directors and employees from infringing on or passing intellectual property belonging to Buupass.

Buupass was registered on June 29, 2017, and deals with software, electronic and magnetic card tickets.

It also provides an SMS-based ticketing platform to pre-book buses and pay using mobile money and computer booking services.

Buupass argued that their trademark had not been subject to any challenge and should enjoy exclusive rights under it in providing online ticketing services.

They said that Buspass or any other identical trademark was meant to deceive or cause confusion in the course of trade for online bus ticketing and its use without permission amounted to infringement.

Buupass argued that the move to register the Buspass was deliberate to create confusion for their customers and unfairly leverage their reputation and goodwill.

Buspass was registered on November 27, 2020, and offered online public transport ticketing services.

Buupass denied licensing anyone to utilise, copy or modify their registered and protected trademark and filed a complaint with the Registrar of Companies on February 25, 2022.

Buspass was ordered to change its name within 30 days failure to which they would be struck from the Companies Register but did not comply with the directive.

In their defence, Buspass said that an official search was carried out and found the name Buspass was available for registration.

The Registrar of Companies was an interested party in the case but did not file any pleadings.

Wycliffe Omondi said that the company was first registered as Magic Bus Ticketing Kenya Limited but later changed to Buupass Kenya Limited, a name Kenyans would relate with.

He said that Buspass had been using Buupass to provide online bus ticketing services since its registration and had even taken business permission for the provision of the said services with Nairobi county.

Omondi asserted that the similarity between the two companies is in the name "Buu" which is slang for "Bus" which is strikingly similar.

He further argued that Buspass attributes and design of trade are identical to Buupass name and mark.

According to Omondi, Buspass had created downloadable software for online bus ticketing in the name of "Buspass" and "Buspass Staff" under the category Maps and Navigation which amounts to infringement.

He claimed that the company had been using Buupass and Buspass interchangeably and copying his company's mode of trade.

Omondi cited an incident where a local bus company used the two names interchangeably in their advertisement on Facebook.

This, he said confused the public, especially his customers by misrepresenting that Buspass services are alike and related to Buspass.

Omondi said that they issued Buspass with a cease-and-desist notice on February 3, 2021, and instead of complying they denied using Buupass' trademark or one resembling it in a February 4 letter.

He lamented that ever since Buspass came into operation they noticed a decrease in the number of app downloads and online bookings.

From the mobile app, he argued that customers could book bus tickets but when using a computer to search Buupass the results Buspass also appeared hence losing customers to the latter.

Buspass lawyers argued that the only similarity shared was that the two companies were operating in the same industry.

They further argued that the two names are distinctive and easily differentiable to customers and did not cause any confusion as alleged by Buupass.

According to the lawyers the name changed from Magic Bus Ticketing Kenya Limited to Buupass Kenya Limited saw the goodwill attached to their former name cease to exist.

They further argued that Buspass had nothing to gain from associating itself with Buupass and they had not used their name in any way.

They said that their registration by the Registrar of Companies was after a thorough examination which considered all conflicts with existing trademarks.

Buspass said the case had been filed prematurely since Buupass had not exhausted all administrative remedies available.

On their part, Buupass argued that the case was filed after Buspass failed to comply with a directive from the registrar.

Justice Mwangi ruled that the two names were not only similar but also phonetically and visually similar.

She directed the chairperson Institute of Certified Public Accountants of Kenya to appoint an accountant to establish profits made by Buspass using Buupass trademark.