Kenyan Trade Mark Judgment: The Bix Family
The recent decision of the Kenyan High Court in the case of Weetabix Limited v Manji Food Industries Ltd is noteworthy. Firstly trade mark judgments are rare in Kenya. Secondly, because it deals with a range of issues - likelihood of confusion, a family of marks, well-known marks and passing off. Thirdly, because the court managed to reach a decision which, although not unreasonable, may seem a bit odd to some.
Weetabix has registrations for a number of marks for cereals including Weetabix, Oatibix, Bananabix, Fruitibix and Chocobix. It seemingly also has a registration for ‘-bix’. It has used these marks extensively and for many years.
Manji sold cereals under the mark Multibix. It filed an application for registration but this was successfully opposed by Weetabix, with the Registrar finding that there was a likelihood of confusion. When Manji kept selling its product, Weetabix approached the High Court for an injunction based on trade mark infringement and passing off.
The court found for Weetabix and it made some interesting findings. It disapproved of the fact that Manji had continued selling its product after the trade mark application had failed: ‘The ideal position would have been for the Defendant to cease all actions of trading in the mark Multibix immediately the said Ruling was delivered... the Defendant, in defiance of the said Registrar’s Ruling, continued to engage in business as usual.’
The court ruled that the Registrar’s earlier ruling disposed of the matter: ‘There exists an issue estoppel...on the question of whether or not the Defendant’s Multibix is an infringement of the Plaintiff’s product Weetabix…the Registrar of Trademarks is an expert in trademark issues.’
Applying INTA guidelines regarding families of marks, the court held that Weetabix had ‘established an apparent series of trade marks with a recognizable and common characteristic of ‘-bix’ specifically when the same is applied as a suffix.’ The court referred to this as ‘The Bix Family.’
On the issue of whether or not Weetabix qualifies as a ‘well-known trade mark’ under Section 15 of the Act, the court found that it did, making the comment that the Registrar had found that ‘Weetabix is quite well known in Kenya.’ This finding, said the court, rendered use of the trade mark ‘or any part thereof’ by anyone else unlawful.
Finally on the issue of passing off, the court held that the requirements of goodwill, misrepresentation and damage had been met: ‘The incorrect relation between these two trademarks is one that cannot be erased from the minds of the consumers as they purchase the goods in question.’
An injunction was therefore granted, which is not too controversial. However it is unusual that a company is expected to stop using a trade mark simply because its application is refused. Can it not hope that a High Court judge might find differently to a trade mark hearing officer as it undoubtedly is entitled to do. In short, the court erred in finding that the Registrar’s ruling (in the opposition matter) was binding on the court. With respect, the court was also at least clumsy in suggesting that a mark may be regarded as “well-known” simply because it is “quite well-known”. In that regard, there is not enough detail in the judgment to express an opinion whether or not a finding was justified that the Weetabix mark was well-known in Kenya. That is a pity, as such analysis would have served as useful precedent.
Despite the apparent flaws in the court’s reasoning, the case demonstrates again the need to register trade marks in Kenya including those parts of a mark that may be considered distinctive in their own right.
This article was first published in the April 2015 edition of Managing Intellectual Property.