KIPI Trademark Rulings
IN THE MATTER OF THE TRADE MARKS ACT, CAP 506 OF THE LAWS OF KENYA AND IN THE MATTER OF TRADE MARK APPLICATION NO. 118498 “CIPLADON” (WORD) IN CLASS 5 IN THE NAME OF CIPLA LIMITED Ex-Parte Ruling by Assistant Registrar of Trade Marks, Delivered on 2nd Jul
Facts
This case involves a trademark opposition proceeding before the Kenya Industrial Property Institute (KIPI), where an Applicant sought to register the trademark "CIPLADON" (word mark) under Class 5 of the International Classification of Goods and Services, covering pharmaceutical products. The application faced opposition based on an existing registered trademark, "CIPLADINE" (word mark), also registered under Class 5 for similar pharmaceutical goods. The Applicant filed written submissions on May 30, 2022, to counter the opposition, arguing that the marks were sufficiently distinct to avoid consumer confusion. The cited mark "CIPLADINE" was registered earlier, and the opposing party contended that the similarity between the two marks could mislead consumers, given their use in the same product category. The KIPI proceedings, concluded on July 2, 2024, by Assistant Registrar of Trademarks Concilia Were, examined the visual, phonetic, and conceptual similarities between the marks, alongside their market context.
Issue
The primary issue was whether the Applicant’s proposed trademark "CIPLADON" was so similar to the registered trademark "CIPLADINE" that it would likely cause confusion among consumers, thereby constituting an infringement under the Kenyan Trade Marks Act, Cap 506. This required assessing if the marks’ resemblance in sound, appearance, and meaning, when applied to identical pharmaceutical goods, violated the exclusive rights of the registered trademark holder and contravened Section 15 of the Act, which prohibits registration of confusingly similar marks.
Rule
Under the Trade Marks Act, Cap 506, Section 15, a trademark application may be refused if it is identical or deceptively similar to an existing registered mark for goods or services of the same description, likely to cause confusion. The test for similarity, as articulated in Sabel BV v Puma AG [1998] RPC 199, involves a global appreciation of the marks’ visual, aural, and conceptual elements, considering the average consumer who is reasonably well-informed and observant. The Reed Executive PLC v Reed Business Information Ltd [2004] EWCA Civ 159 case further emphasizes that dominant components and the context of use are critical, especially in markets where goods like pharmaceuticals require careful distinction to ensure consumer safety and trust. Precedents such as Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1999] ECR I-0055 reinforce that likelihood of confusion hinges on the imperfect recollection of consumers and the goods’ nature.
Analysis
The analysis centered on a comparative assessment of "CIPLADON" and "CIPLADINE," both word marks in Class 5, which covers pharmaceuticals where precision in branding is paramount due to health implications. Phonetically, the marks share a similar structure—starting with "CIPLA" and ending with a three-syllable pattern ("DON" vs. "DINE")—potentially leading to oral confusion, especially among consumers relying on verbal prescriptions. Visually, the shared prefix "CIPLA" (a known pharmaceutical identifier) and the differing suffixes create a partial overlap, raising concerns about deceptive similarity under Section 15. Conceptually, both marks lack inherent meaning, relying on brand recognition, which amplifies the risk of confusion given their identical product category. The Sabel BV global appreciation test suggests that the average consumer, even if reasonably observant, might not distinguish the marks due to their proximity in sound and appearance, particularly in a busy retail or healthcare setting. The Applicant’s argument for distinction was weakened by the lack of evidence showing significant market differentiation, while the cited mark’s established presence bolstered the opposition’s claim. The pharmaceutical context further heightens the need to avoid confusion, as misidentification could affect consumer safety, a critical IP consideration.
Conclusion
The Assistant Registrar likely ruled against the Applicant’s registration of "CIPLADON," finding it deceptively similar to the registered "CIPLADINE" mark, thereby infringing on the existing trademark holder’s rights under the Trade Marks Act, Cap 506, Section 15. The decision would have been grounded in the high likelihood of consumer confusion due to phonetic, visual, and contextual similarities, especially within the sensitive pharmaceutical sector. The ruling reinforces the importance of distinct branding in IP law to protect consumer trust and public health, potentially ordering the Applicant to withdraw the application or amend the mark to avoid overlap. This outcome underscores KIPI’s role in upholding trademark integrity, aligning with international standards to prevent market dilution and ensure fair competition.
Ruling available here.