KIPI Trademark Rulings
IN THE MATTER OF TMA NO. 65912 (GULF ENERGY Follow Us to the Future – logo) and TMA NO. 68113 (GULF ENERGY - logo), IN THE NAME OF GULF ENERGY LTD. AND OPPOSITION THERETO BY GULF INTERNATIONAL LUBRICANTS LIMITED
Facts
This opposition concerned two trademark applications filed by Gulf Energy Limited (“the Applicant”) for “GULF ENERGY Follow Us to the Future” (TMA No. 65912) and “GULF ENERGY & G Device” (TMA No. 68113), both filed in Classes 4, 12, 16, 25, 35, and 42. The applications were approved for advertisement in the Industrial Property Journal.
Gulf International Lubricants Limited (“the Opponent”) opposed the registration in Classes 4 and 35, citing its prior trademarks “GULF” (word mark) and “GULF” (logo) registered under TMA Nos. 43442 and 43443 in Class 4 since 1995. The Opponent contended that the Applicant’s marks closely resembled its registered marks and were likely to cause confusion among consumers. It further argued that its trademarks were well-known internationally and locally, deserving protection under section 15A of the Trade Marks Act (Cap 506).
The Applicant denied the allegations, asserting that its marks were visually and conceptually distinct from the Opponent’s marks and that “GULF” was a geographical name not entitled to exclusive ownership. It further contended that it had disclaimed exclusive rights over the word “GULF” and had used its mark since 2008.
Both parties filed statutory declarations and supporting exhibits, including international registration certificates, photographs of product use, invoices, and promotional materials. After a joint hearing on 14 February 2012, the Registrar of Trade Marks, Dr. Henry Kibet Mutai, delivered his ruling on 15 May 2012.
Issue
Whether the Applicant’s trademarks “GULF ENERGY Follow Us to the Future” and “GULF ENERGY & G Device” were so similar to the Opponent’s registered marks “GULF” (word and logo) as to cause confusion or deception under sections 14, 15(1), and 15A of the Trade Marks Act.
Rule
The Registrar relied on sections 14, 15(1), and 15A of the Trade Marks Act (Cap 506):
Section 14 prohibits registration of marks that are likely to deceive or cause confusion.
Section 15(1) prevents registration of identical or nearly resembling marks in respect of the same goods or services.
Section 15A extends protection to well-known marks in Kenya, even where the proprietor is not locally registered.
The Registrar also referred to jurisprudence from cases such as Sabel BV v Puma AG (1997) on the “global appreciation” test for similarity, Beiersdorf AG v Emirchem Products Ltd on the burden of good faith in selecting similar marks, and Independent Tobacco FZE v Rothmans of Pall Mall on proof of a mark’s well-known status in Kenya.
Analysis
(1) Similarity of Marks
The Registrar found that “GULF” was the dominant and distinctive feature in both the Applicant’s and the Opponent’s marks. While the Applicant had added elements such as “ENERGY,” “Follow Us to the Future,” and a “G” device, these did not sufficiently distinguish the marks. The shared use of the word “GULF,” a circular device, and blue colour scheme created a strong visual and conceptual resemblance.
The Registrar rejected the Applicant’s argument that the Opponent’s orange circle and other stylistic details were sufficient differentiators. Instead, the ruling emphasized that the average consumer perceives a mark as a whole, without dissecting minor design differences. The choice of a similar mark by the Applicant was viewed with suspicion, as it had the potential to mislead consumers into believing the two companies were related.
Accordingly, the Registrar held that the Applicant’s marks bore a “sufficiently close similarity” to the Opponent’s marks to bar registration in Class 4 (petroleum products).
(2) Likelihood of Confusion or Deception
Since both parties’ marks applied to Class 4 goods, the Registrar concluded that the Applicant’s use of “GULF ENERGY” would likely deceive or confuse consumers of petroleum products. Customers could easily believe that the products originated from, or were associated with, Gulf International Lubricants Ltd.
The Applicant’s contention that “GULF” was a geographical term was dismissed. The Registrar found no evidence proving that “GULF” had become generic or descriptive of petroleum products. The disclaimer of “GULF” by the Applicant was therefore insufficient to avoid the risk of confusion.
(3) Whether the Opponent’s Marks Were Well Known
On the claim that “GULF” was a well-known mark in Kenya, the Registrar applied the test under section 15A(1) and the WIPO Joint Recommendations on Well-Known Marks. While the Opponent presented evidence of international registrations, website printouts, and invoices, the Registrar held that these materials failed to demonstrate widespread recognition or use of the mark in Kenya.
The Opponent’s invoices were dated on a single day and did not show consistent sales activity or market share. The Registrar emphasized that well-known status must be proven within the relevant Kenyan market, not by foreign reputation alone. Thus, the Opponent failed to establish that “GULF” was well known in Kenya.
(4) Registrability under Sections 14, 15(1), and 15A
The Registrar concluded that registration of the Applicant’s marks for Class 4 goods would contravene sections 14 and 15(1) due to the likelihood of confusion and resemblance. However, as the Opponent was not registered in Class 35 (advertising and business management services), there was no legal basis to oppose registration in that class.
The Registrar also rejected the Applicant’s claim that its substantial investment (approximately Kshs. 600 million) justified allowing registration, holding that commercial expenditure could not override prior trademark rights. Businesses assume the risk of rebranding if they knowingly adopt marks similar to existing ones.
Finally, the Registrar observed that the Opponent’s evidence did not fully comply with Rule 9 of the Oaths and Statutory Declarations Rules, as exhibits were marked but not sealed. Nevertheless, the evidence was considered in the interest of justice since the Applicant had not objected.
Conclusion
The Registrar held that Gulf International Lubricants Ltd had exclusive rights to the word “GULF” in Class 4. Consequently, the opposition against the Applicant’s trademarks succeeded in respect of Class 4 but failed regarding Class 35. The Applicant was permitted to register “GULF ENERGY & G Device” for Class 35 only and could amend its application to register the stylised “G” device separately for Class 4. Each party was ordered to bear its own costs.
Ruling available here.