1

INTELLECTUAL
PROPERTY LAW

COURSE DIRECTOR: MRS F. TOO

Registration 2

 The main reasons for rejecting

an application?
 Absolute grounds-Generic terms
e.g the actual names of the
products in question such as
trademark CHAIR to sell chairs
- Descriptive terms e.g the mark
SWEET is likely to be rejected for
marketing juice
Registration 2 3

 Relative grounds- The trademark is

in conflict with prior trademark
rights. Having two identical (or very
similar) trademarks for the same
type of products could cause
confusion among consumers
- The mark is, in its ordinary
signification, a geographical name
or a surname. In such cases proof
of secondary meaning may be
required before registration.
Registration 3 4

Marks considered to be
contrary to public order or
morality.
 Flags, armorial bearings,
official hallmarks and
emblems of states and
international organizations
RIGHTS
5

 Rights to use the TM, if a 3rd party

uses the TM to further his own
interests, it amounts to
infringement (sec 7(1) the
exclusive right to the use of the
trade )
 Institute proceeding against any
infringements (sec 5)
 Rights under common law- passing
off and injurious falsehood.
OBLIGATIONS 6

 Renewal of trademark (Sec 23)

 An affirmative duty upon a
licensor of a registered
trademark to take reasonable
measures to detect and
prevent misleading uses of his
mark by his licensees
 ‘Police’ the use of a mark by
unauthorized users
LIMITATIONS 7

Sec 7(2)The right to the

use of a trade mark given
by registration shall be
subject to any conditions
or limitations entered on
the register
INFRINGEMENT 8

 What is it?
 Preventing direct harm is a prime
object in def infringement
 The use of identical or similar trade
mark for identical or similar goods
and services to a registered trade
mark - may be lead to infringing
the registered mark if the use
creates a likelihood of confusion on
the part of the public.
EXAMPLES 9
 The registration of a domain name, which is identical or
confusingly similar to another entity’s trade mark, is likely
to constitute trade mark infringement
 In the case of Perfumebay.com Inc. v. eBay Inc No. 05-
56794, 14521 (9th Cir. Nov. 5, 2007)
 Court addressed the issue of the rights associated with
domain names and trade mark on the Internet. It granted
an injunction preventing Perfumebay from using the word
“Perfumebay” as it was likely to cause confusion with eBay.
EXAMPLE CONT. 10

The court held that the

marks were similar
because “Perfumebay”
incorporates “eBay” in its
entirety, especially when
it is spelled “PerfumeBay
CONSEQUENCES 11

 The sale of products or services that infringe

registered trade marks may make the company
liable for trade mark infringement
 In a case from France, a company called
Worldmedia infringed Christian Dior’s trade
mark and copyright by illegally producing and
disseminating Dior’s garments electronically
through its commercial website.
 Christian Dior sued Worldmedia and the
Tribunal ordered Worldmedia to refrain from
reproducing Christian Dior’s trade marks and
logos, as well as from further copyright
infringement though its commercial website
CASE 1 12

 The case of Arsenal Football Club

plc vs. Reed
 Mr. Reeds an Arsenal fan
manufactured and sold goods
bearing the Arsenal names and
logos from a stall in Highbury.
 Although Reeds did not indicate
that the goods were Arsenal-
originated, the court ruled that he
was liable for trademark
infringement as he had jeopardized
the origin of Arsenal’s trademarks.
CASE 2 13

 Brooke Bond (Kenya) Ltd. v. Chai Ltd.

 The defendant had represented their
packaged tea in green packaging
similar to that of the plaintiff.
 The defendant had also used the
words “green label tea” just as the
plaintiff had. The suit failed to meet
the standard for trade mark
infringement.
CASE 2 CONT. 14

 The court considered the

words used to be descriptive
of the type of tea.
 The defendant was,
however, held liable for
passing off because the
general (trade) dress of the
goods was similar to the
plaintiff’s
CASE 3 15

 On Group 4 Security Ltd vs G4S

Security Services (K) Ltd, wherein it
was noted that actual loss need not
be proved where similarities raised
a real probability of confusion to
customers.
 He contended that since the
plaintiff had proved that there was
infringement of its trademark the
plaintiff’s rights ought to be
protected
CASE 16

 Lords Healthcare Limited v Salama

Pharmaceuticals Limited [2008]
eKLR
 This case related to a trademark
dispute where the plaintiff, sought
a temporary injunction against the
defendant, to retrain the latter
from importing, distributing,
supplying, stocking and/or selling
pharmaceutical products bearing
the trade mark ‘Budecort’
CASE 17
 The court opined that the issue was
not one of deceptive similarity or
passing off as the product was one
and the same, but whether the
plaintiff had exclusive rights to the
use of the name ‘Budecort’ to the
extent that it could claim
infringement of that right by the
defendant selling the same product
bearing the name ‘Budecort’.
CASE (Cont.,) 18

 It held that the determination of the

issue of the plaintiff’s right and
alleged infringement did not only
depend on the registration of the
trademark ‘Budecort’ but included
determination of other issues such
as the existence of the International
Trademark, the application of the
same in Kenya and the effect if any,
on the alleged registration of the
plaintiff’s trademark
WHAT IS PASSING OFF? 19
 It is a common law tort which can be
used to enforce unregistered trademark
rights.
 The tort of passing off protects the
goodwill of a trader from a
misrepresentation that causes damage
to goodwill.
 Therefore, it can be def as some false
representation likely to induce a person
to believe that the goods or services
are those of another.
OBJECTIVES 20

 Protection of traders and the

prevention of commercial
dishonesty
 Trading must not only be
honest but must not even
unintentionally be unfair
 Passing off categorically does
not confer monopoly rights in
any names, marks, get-up etc
SCOPE 21
 The concept of passing off has undergone
changes in the course of time.
 At first it was restricted to the representation
of one person's goods as those of another.
 Later it was extended to business and
services.
 Subsequently it was further extended to
professions and non-trading activities.
 Today it applies to many forms of unfair
trading and unfair competition where the
activities of one person cause damage or
injury to the goodwill associated with the
activities of another person
ELEMENTS OF PASSING OFF: GOODWILL
22

 Generally see these cases for

elements :Erven Warnink Vs.
Townend and Reckitt & Colman
ltd v Borden inc
 Goodwill is the reputation attached
to the goods or services which he
supplies in the mind of the
purchasing public
 It consists simply of a brand name or
a trade description, or the individual
features of labeling or packaging
 23
ESTABLISHING GOOD WILL
 Draws customers
 Distinguishes an old established
business from new at its first
start. However, just because a
trader has started business
does not equate to goodwill
 Customers buying goods,
services as a result of
reputation that business has
developed
CASE EXAMPLE 24

 Hines v Winnick
 H an artist had established
his reputation under the
name of ‘Dr Crook’. The
defendant was restrained
thro’ injunction from using
the same name.
ELEMENTS: 25
MISREPRESENTATION
 The plaintiff must demonstrate
misrep.. by the defendant to the
public ( intentional or not)
leading or likely to lead the
public to believe that goods or
services offered by him are the
goods or services of the plaintiff.
 Express or implied
 Covers descriptive material,
distinctive character that market
recognizes –Cadbury-S v Pub
Squash
ELEMENTS:DAMAGE 26

A plaintiff must have suffered

damage by reason of the
erroneous belief engendered
by the defendant's
misrepresentation that the
source of the defendant's
goods or services is the same
as the source of those offered
by the plaintiff
Lord Diplock in Erven Warnink : 5 essential
27
characteristics for valid cause of action
1. Misrepresentation
2. Made by a trader in the course of trade
3. To prospective customers of his or
ultimate consumers of goods or services
supplied by him
4. Calculated to injure the business or
goodwill of another trader (reasonably
foreseeable consequence)
5. Causes actual damage to a business or
goodwill of the trader by whom the
action is brought or will probably do so
 28
LORD FRASER-AMPLIFICATION
 Directed to particular facts of case;
Expressly states: Must be reputation in
a particular trade name distinguishing
the class of goods from similar goods to
which goodwill is attached
 3 Valid qualifications (goodwill ,
misrep about def goods rather than
pltffs, pltff should belong to a clearly
defined class entitled to make
representations about their own goods)
Extended Forms of 29

Passing off off which applies where

 one kind of passing

A) particular sign has obtained some distinctiveness in

relation to goods of a particular quality;
B) Goods not having that quality are sold under that
sign (or a confusingly similar one); and,
C) Any business having goodwill from dealing properly
in those goods under that sign has, or is likely to,
suffer damage.
 Extended passing off protects use of a descriptive term
associated with a distinctive and recognizable product;
geographical association is not required.
 Can now mean a particular product rather than a
product from a particular trader
 Damage: Dilution
CASE EXAMPLE 30

 Diageo North America Inc v

Intercontinental Brands (ICB) Ltd
FACTS: the defendant marketed a
drink named “Vodkat”, which was
actually not vodka, but the
marketing did not actually make it
clear that it wasn’t so. The plaintiffs
were the biggest manufacturers of
vodka and they filed a suit against
the defendants for passing off and it
was held so.
REVERSE PASSING OFF 31

 Occurs when ‘the producer

misrepresents someone else's goods
or services as his own.’ That is, ‘X’
copies ‘Y's’ work without permission
and claims it as ‘X's’ own.’
 In Bristol Conservatories Ltd. v
Conservatories Custom built
[1989] RPC 455), Court held that
when defendant claims the claimant's
work as his own; it can be considered
as a case of reverse passing off.
 32
Forms

of Passing Off
Trading with the Name Resembling that of
the Plaintiff
Example in Honda Motors Co. Ltd V
Charanjit Singh & Others
 FACTS: Plaintiff was using trademark
"HONDA" in respect of automobiles and
power equipments. Defendants started
using the mark "HONDA" for its pressure
cookers. Plaintiff bought an action against
the defendants for passing of the business
of the plaintiff.
 33

Forms of Passing Off

(Cont.,)
 Held: the use of the mark
"Honda" by the defendants
couldn't be said to be an
honest adoption. Its usage
by the defendant is likely to
cause confusion in the minds
of the public. The application
of the plaintiff was allowed.
CEVIL REMEDIES 34

 Injunction
 Account of profits
 Damages
 Delivery up or destruction
 Search and seizure orders
CASE EXAMPLE 35

 British America Tobacco v. Cut Tobacco

 Judges Moijo ole Keiwa and Richard Kuloba
considered these issues and granted an
interlocutory injunction partly because the
respondent had hinted at the pecuniary loss
they would suffer. Consequently, monetary
damages could be available
 Note this case sets the principles upon which an
injunction to restrain infringement of a
copyright, could be granted
CRIMINAL REMEDIES 36

 particular section 58 H(1) of the Trade Marks

Act provides that:
 "On conviction of any person for an offence
under this Part, the court in addition to any
sentence passed, declare any goods in respect
of or by means of which the offence was
committed to be forfeited to the Government,
unless the owner of the goods or any person
acting on his behalf, or any other person
interested in the goods shows cause to the
contrary
CRIMINAL REMEDIES IN 37

TM A cont
Penalties for infringing
trade marks of a
maximum of K Sh
200,000).

CRIMINAL REMEDIES 38

Customs and Excise Act-Sections 14(2),

15(2)(a) and the eighth schedule of the
provide for the authorized authorities to
order the destruction or disposal of
infringing goods. The offence procedures
are provided for under section 185.
Part XXXVIII of the Penal Code, chapter
63 of the Laws of Kenya (sections 380 to
381) deal with the offences related to
counterfeiting trademarks
CRIMINAL REMEDIES 39

cont.
 An owner of a TM, one can lodge a complaint
with the Kenya Anti-Counterfeit Agency or the
commissioner of customs as provided for in
Anti-counterfeit Act-
 The Act also makes provision for inspectors to
search and enter premises with a view to
seizing counterfeit goods
 -An inspector may furthermore arrest, without a
warrant, any person whom he or she
reasonably suspects has committed an offence
in terms of the act
CRIMINAL REMEDIES 40
 The trademark owner is the one
entitled to seek a remedy for trademark
violation. However, a licensee has
limited rights to do so in instances
where the trademark owner is unwilling
to seek the remedy
 A criminal complaint is brought by the
trademark owner, but the trademark
owner can, by a power of attorney,
authorize another person to lodge the
complaint on behalf of the trademark
owner
DEFENCES TO PASSING OFF 41

 The claimants mark, slogan

etc is not distinctive
 The mark, slogan etc has
become generic
 The defendant may be
innocently using his or her
own name
 The claimant has given
consent
Next week 42

Patents