Tuesday 29 March 2011

Darren Olivier

"Proudly Kenyan" protectable? - High Court speaks out

Afro Leo received the following judgment summary from Kenyan IP experts John Syekei and Andrew Ndikimi (Coulson Harney). The Court did not hold back in rebuking the local Registry yet themselves made mistakes.

The High Court of Kenya, in the recent case of Mathew Ashers Ochieng –vs- Kenya Oil Company Limited & Kobil Petroleum Limited (civil case No. 377 of 2007) has held that descriptive expressions or slogans such as “PROUDLY KENYAN”, which are widely used and familiar within the public domain, should not be registrable as trade marks. John and Andrew summarise their thoughts in a considered article (click here) as follows:

(1)  The fact that descriptive words, expressions, slogans etc are not registrable as trade marks in Kenya.

(2)  That the protection afforded by trade marks registration in Kenya is class specific.

(3)  The mere fact that a person has registered any descriptive words, slogans, expressions or common name, etc. as a trade mark cannot entitle him any legal protection of a right acquired through the inept and inattentive action of the registering authority and no property right can be acquired through the laxity and negligence of public officers to adhere to their legal mandate by allowing the registration of unregistrable trade marks.

(4)  Local firms should not invoke their roots to edge out foreign and local competitors by registering trade marks that are not distinctive, but are merely slogans aimed at boosting their sales and inspiring customer loyalty, patriotism etc on the basis of their Kenyan identity. Therefore both local and foreign firm can successfully challenge such wrongfully registered trade marks in the event that they are threatened with any such misconceived trade mark infringement action.

Further, any such act of purporting to register such marks can be deemed to constitute restrictive trade practices under the recently gazetted Competition Act, 2009.

Darren Olivier

Darren Olivier

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Kingsley Egbuonu
4 April 2011 at 13:50 delete


This is definitely descriptive and arguably generic. Therefore, not registrable. There may be a second bite to it if one can prove secondary meaning with descriptive terms.

The Court was right - this is a slogan that can be used by every person(s) in Kenya even for state branding, and this should not be monopolised by one person (that's the principle behind TMs).

How the Kenyan IPO allowed this on the register is a discussion for another day since this may well happen in any other IP office in the continent.

The closest way this might be used is as a GI. Though it will struggle to be recognised as such since other producers may need to use such slogan as well.

Everything depends on national laws and ultimately, the final say lies with the Court and it held correctly.

It is also good to see that anti-competitive measures are in place in Kenya to control IP.