WELL KNOWN TRADEMARKS IN KENYA By Caroline W. Muchiri 12/31/2018

Definition Well Known Marks are those marks that are considered to have gained reputation through their use in the market. As a result of this reputation, well known marks enjoy some level of protection whether or not they are registered. Some well known marks are usually accompanied by registration in the respective jurisdiction where protection is being sought; The question of ‘wellknownness’ of a mark usually arises when there are disputes for instance upon registration of a similar mark by a third party or infringement. It does not arise when examining the mark as to its registrability. 12/31/2018

Definition The question of whether a mark is well known or not does not arise when the said mark is being examined for it’s registrability; This is usually a claim of protection of an unregistered mark put forth by an owner of a mark when opposing expunging the registration of a similar or identical mark or even in infringement proceedings; 12/31/2018

Definition It can therefore be said that ‘wellknownness’ of a marks is a status conferred on an unregistered mark by a competent authority to afford it protection; It revolves around the law of passing off where a person is not allowed to ride on or cash in on the goodwill of another; 12/31/2018

THE LAW ON WELL KNOWN TRADEMARKS The law on well known trademarks is traced back to the Paris Convention on Protection of Industrial property; Article 6 bis provides for the protection of well known marks by obligating the countries of the Union to afford the highest level of protection to well known marks either on request of an interested party or through its own legislation. 12/31/2018

THE LAW ON WELL KNOWN TRADEMARKS The protection under article 6bis is hinged on the following requirements:- The mark must be considered by a competent authority of the country of registration or of use, to be a well known mark; The interested party must be a person entitled to the benefits of the convention; The mark must be used for similar goods. 12/31/2018

LAW IN KENYA-BEFORE 2002 Before 2002, Kenya did not have provisions on the protection of well known trademarks. The operative law was derived from TRIPS; In the matter of trademark applications number 43283—4 N’ ICE (word) in the name of Beta Health Care International Limited and the opposition thereto by Smithkline Beecham, (1998), the registrar recognized that despite the absence of laws in Kenya protecting well known marks, the registrar had a duty to refuse the registration of marks that are reasonably well known and used in other countries. This is so, even when the interested party does not have a registered trademark. 12/31/2018

LAW IN KENYA-BEFORE 2002 Based on this duty, the registrar refused to register a mark which was identical to that of the opponent and was covered the same goods even when the opponent had not registered it’s mark in Kenya; In the registrar’s opinion, the applicant ought to have known that about the opponent’s marks as they were in the same market; Protection afforded to well known marks prevents people from ‘lifting’ marks in other jurisdictions and seeking to register them where the owner has not registered them; 12/31/2018

LAW IN KENYA-AFTER 2002 TO DATE In 2002, the Parliament amended the Trademarks Act by inserting Section 15A which expressly recognises well known marks in Kenya; The section defines a well-known mark with reference to the Paris Convention and the WTO Agreement(TRIPS); 12/31/2018

LAW IN KENYA- AFTER 2002 TO DATE The obligation to protect well known marks was imposed on the member states of the WTO and Kenya in compliance had to amend its laws to comply; Importantly, the insertion came immediately after section 15 which prohibits the registration of similar or identical marks to those one that is already on the register; 12/31/2018

LAW IN KENYA-AFTER 2002 TO DATE Section 15A defines a well known mark to mean “A mark which is well known in Kenya as being the mark of a person who is either a national of a convention country, is domiciled there or has a real and effective industrial commercial establishment there.” Section 15A (4) expressly prohibit the registration of a similar or identical mark to a well known trademark; 12/31/2018

LAW IN KENYA-AFTER 2002 TO DATE Section 15A (2) allows an owner of a well known mark to obtain injunction to restrain the use and registration of a similar mark subject to section 38B; Under the Act there is no section 38B and it can only be inferred that the Parliament meant section 36B which is a statutory estoppel to claimant; Section 36B disentitles an owner of a registered mark from relying on an earlier marks where he has acquiesced to the use of a similar mark for a period of five continuous years 12/31/2018

TESTS OF WELL KNOWN MARKS The Trademarks Act and the Paris Convention however lack a criteria to be used when determining whether a mark is a well known mark or not; In 1999, the General Assemblies of the Paris Union and WIPO adopted some Joint Recommendations concerning provisions on the protection of well-known marks which provides a guide as to the test to be administered to a mark before the well known status can be conferred; 12/31/2018

THE JOINT RECOMMENDATIONS OF THE GENERAL ASSEMBLY The recommendations are:- The degree of knowledge or recognition of the mark in the relevant sector of the public. The members of the ‘relevant public’ must be able to identify or associate the mark with the proprietor. They are deemed to have different levels of cognizance and therefore the degree of knowledge required varies from consumer to consumer; 12/31/2018

JOINT RECOMMENDATIONS OF THE GENERAL ASSEMBLY For instance, smokers, beer drinkers, car dealers are usually treated as consumers who are knowledgeable as opposed to a ‘Mama Mboga’. In the British American Tobacco Kenya vs Cut Tobacco Kenya Limited (2001) the judge stated as follows:- “None of the members of the bench was a smoker but we now understand that generally smokers stick to their own brand of cigarettes just the way beer drinkers stick to their own brand of beers. 12/31/2018

JOINT RECOMMENDATIONS OF THE GENERAL ASSEMBLY b. The duration of any promotion of the mark in respect to the goods the mark applies, including advertising or publicity and presentation in fairs, exhibitions or goods and or services of which the mark applies; Publicity good or bad creates or increases the amount of goodwill associated with a mark; 12/31/2018

JOINT RECOMMENDATIONS OF THE GENERAL ASSEMBLY c. The duration, extent and geographical area of use of the mark. The longer the duration, the larger the extent and the bigger the geographical area of use of the mark, the higher the chances that the mark will be considered to be a well known mark; It is assumed that such use is evident that the members of public have actual knowledge of the mark in question and can easily associate it with the proprietor 12/31/2018

JOINT RECOMMENDATIONS OF THE GENERAL ASSEMBLY d. The duration and geographical area of any registrations and or any applications for registration of the mark. This serves to prove interest in protecting the mark as well as recognition that other competent authorities have recognized the mark as a mark in their jurisdiction; The applicant must have registered the mark in its country of origin or where it has established business 12/31/2018

JOINT RECOMMENDATIONS OF THE GENERAL ASSEMBLY e. The record of successful enforcement of rights in the mark, in particular the extent to which the mark has been recognized as a well known mark by other competent authorities; Although not a reason for refusal of protection of a well known mark, a record of successful enforcement of its rights is of very high persuasive value to an applicant; If there are no records, the standards are usually higher as the applicant has to convince an authority why it has to be the first to confer such protection to him 12/31/2018

JOINT RECOMMENDATIONS OF THE GENERAL ASSEMBLY f. The value associated with the mark; This refers to the commercial value of the mark; This can be proven by adducing records of previous sales of the product where this mark is used in various countries including where the applicant is seeking protection if any; 12/31/2018

INTA’S RECOMMENDATIONS AND TEST The International Trademark Association (INTA), has also developed some guidelines on the test to be applied when determining whether or not a mark is well known; These guidelines are commonly referred to INTA’s Resolution of Well Known Marks; They fill in the gaps that were left by the recommendations of the General Assembly as they were developed by practitioners; 12/31/2018

INTA’S RECOMMENDATIONS AND TEST INTA endorses the following criteria for consideration before a mark can be said to be a well known mark:- The amount of local or worldwide recognition of the mark; The degree of inherent or acquired distinctiveness of the mark; 12/31/2018

INTA’S RECOMMENDATIONS AND TEST c. The local or worldwide duration of use and advertising of the mark. This is of particular importance as some applicants may begin a fierce campaign shortly before or after filing an application seeking protection as a well known mark; d. The local or worldwide commercial value attributed to the mark; e. The local or geographical scope of use and advertising; 12/31/2018

INTA’S RECOMMENDATIONS AND TEST f. The local or worldwide exclusivity of use and registration attained by the mark with specific regard to the presence or absence of identical or similar third party marks validly registered for or used on identical or similar goods or services; g. The local or worldwide quality image that the mark has acquired; 12/31/2018

COMMENTARY The INTA’s resolutions introduce two main considerations to be had when determining whether or not a mark is well known or not. There is reference to ‘Local’ meaning that a mark can be claiming to be a well known mark locally as opposed to internationally. For instance “Kimbo” or “Treetops” could be considered to be a well-known mark in Kenya in 1990’s but the same could not be said internationally; 12/31/2018

COMMENTARY b. There is also reference to co-existence of marks. Where a mark has coexisted with another similar mark e.g. Panadol and Sonadol in Kenya, neither of the owners can claim to be entitled to protection of their mark as a well known mark in another jurisdiction as against one another or a third party incorporating a similar mark like ‘Betadol’ 12/31/2018

Test in kenya The test of well known marks has been applied in Kenya in several matters including:- Unilever Plc Vs Emami Limited on Fair & Lovely and Fair & Handsome. In part of her decision and in ruling that Fair and Lovely was not a well known mark in Kenya the registrar applied the above tests in the following manner:- “There is no indication of whether the promotional advertising materials in Exhibit SB6 were used in order to determine their reach. Similarly, although ‘SB7” shows that Unilever marks are registered in many countries worldwide this however does not serve to show that the mark is consequently well known in Kenya. 12/31/2018

Test in Kenya I find that there is no evidence of the extent of geographical are of the use of the mark; the duration of any promotion of the mark in respect to the goods the mark applies, including advertising or publicity and the presentation, at fairs or exhibitions of goods which the mark applies has also not been adduced by the applicant. There is also no record of any successful enforcement of rights in the mark in particular the extent of which the mark was recognized as a well known mark by the competent authorities’. 12/31/2018

Conclusion Protection of well known marks is one of the exceptions of territoriality of trademarks and is applied sparingly; Before a mark can be said to be well known, the test must be applied unless it (the mark) has been recognized as such by the same authority; The test of well known mark is usually strict so as to avoid abuse by proprietors of marks who have not sought protection of their marks through registration; 12/31/2018

Conclusion It is also protection that is afforded to owners of a mark who have not registered marks in some jurisdictions by giving them a right to sue for infringement as opposed to suing for passing off; The right to sue for infringement is usually dependent on registration of a mark which is being infringed; The issue of well ‘knownness’ of a mark does not arise during its registration process but only where an owner needs to assert his rights as against another with a similar or identical mark; A mark even when it is considered well known, it is examined for registrability just as any ordinary mark; 12/31/2018

Conclusion There are few marks that would qualify to be protected as well known. They would include Locally-Jogoo for maize flour, Safaricom; Mpesa Regionally-Nakumatt for retail services; KCB for banking services Internationally-Coke of Coca Cola, The list in the test must be exhausted. It is a question of fact and must it must be proven that a mark passes all or majority of the requirements 12/31/2018

Q & A Any Questions 12/31/2018