Kenya Appeal Court Denies Single Colour Protection

Afro IP has come across a recent trade mark decision of Kenya's Court of Appeal (British American Tobacco Kenya Ltd ("BAT") v Cut Tobacco Kenya Ltd ("CUTT") ) in which BAT had unsuccessfully attempted to overturn a decision of the Superior Court in CUTT's favour. BAT and CUTT manufactured two competing brands of cigarettes, SPORTSMAN and HORSEMAN. BATT argued that CUTT had infringed the SPORTSMAN trade mark by using a deceptive imitation of its packaging and was passing off its brand of cigarettes as being those of, or associated with, BAT's cigarettes.

In dismissing BAT's Appeal the three judge Appeal bench held that there can be no proprietary rights in a particular colour and there can be no proprietary rights in general in words descriptive of goods.

Comment:

1. The case contains an interesting analysis of how the laws of trade mark infringement and passing off are applied in Kenya as well as their Court procedure. Unsurprisingly, some reference is made to English law;

2. Despite the fact that this second appeal was heard years after the action was filed in 1999, initial relief was obtained (in BAT's favour) within five months of filing the action in March 1999 and the first appeal was filed in 2000 and heard at separate sittings in 2001 and 2002, when a decision was granted in favour of CUTT in July that year;

3. Security for costs placed into Court by BAT after its initial hearing were in Shs 20,000,000/- Kenya Shillings (or $275,000 at today's exchange rate);

4. The action appears to have been argued using typical action style procedure with four witnesses being cross examined in Court. In some countries in Africa, it is possible to hear these types of cases on the papers alone, principally, to speed up decision making;

5. The eventual outcome is not surprising because "get-up/trade dress" type cases are rarely won without significant evidence showing a likelihood of confusion. Afro IP's guess is that BAT's first victory in 1999 probably gave them sufficient time to commercially secure market share over CUTT whilst the case was pending appeal.