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
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
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.
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