IP Case Law library

Facts

On April 8, 2011, Triclover Industries (K) Limited (the "Applicant") applied for registration of the trademark "SUPA MANDAZI" (WORDS AND DEVICE) under trade mark No. KE/T/2011/071011 in Class 30 for "Baking Powder". The trademark was published on December 31, 2011. Global Investment Development Limited (the "Opponent") filed a Notice of Opposition on February 6, 2012, claiming prior rights to their trademark "Chapa Mandashi", extensively used and well-known for baking powder, and arguing that "SUPA MANDAZI" would cause confusion and deception due to similarities in the market.

Issue

The primary issue is whether the Applicant’s mark "SUPA MANDAZI" is so similar to the Opponent's mark "CHAPA MANDASHI" as to cause a likelihood of confusion and deception among consumers, thus violating sections 14 and 15 of the Trade Marks Act.

Rule

Under section 15(1) of the Trade Marks Act, no trademark shall be registered if it is identical or so nearly resembles an existing registered trademark such that it may likely cause deception or confusion.

Analysis

The ruling on the opposition of the "SUPA MANDAZI" trademark against "CHAPA MANDASHI" involves nuanced assessments of trademark law, particularly concerning the likelihood of confusion. This case's complexity is underlined by evaluating various facets beyond the initial appearance and phonetic similarities, involving deeper insights into consumer behavior, the inherent distinctiveness of the trademarks, and the existing legal standards for trademark opposition.

Distinctiveness and Secondary Meaning:

The strength of a mark heavily influences its protectability. The Opponent, Global Investment Development Limited, claimed that their "CHAPA MANDASHI" mark had acquired considerable goodwill and was distinctive due to long-term and extensive use in the marketplace. According to trademark law principles, a well-established mark enjoys a broader scope of protection, including against marks that might not be identical but are similar enough to potentially cause consumer confusion. However, the Assistant Registrar's analysis suggested that the "CHAPA MANDASHI" mark, while known, incorporates elements that are somewhat descriptive of the goods (baking powder), potentially limiting its distinctiveness and the scope of protection.

Visual, Phonological, and Conceptual Comparisons:

Visually, the Applicant's and Opponent's marks share some elements, such as the use of similar color schemes and a focus on baking-related imagery. However, differences in word placement and design were noted—“SUPA MANDAZI” employs a two-line diagonal placement contrasting with “CHAPA MANDASHI’s” single horizontal line.

Phonologically, the analysis considered the pronunciation differences between "MANDAZI" and "MANDASHI," where subtle phonetic distinctions could be significant enough to reduce the likelihood of confusion.

Conceptually, both marks refer to products used in baking, which might suggest a common industry but not necessarily direct confusion. The usage of different primary words ("SUPA" vs. "CHAPA") adds a layer of differentiation that helps to establish a separate identity in the minds of consumers.

Market Context and Consumer Perception:

The decision weighed heavily on the absence of actual confusion in the marketplace despite concurrent use of the marks. This factor is pivotal in trademark disputes as it provides real-world evidence about how consumers perceive the marks. The Registrar noted that despite the similarities, the detailed distinctions in packaging and presentation, along with no reported incidents of actual confusion, play a crucial role in undermining the Opponent's claim of likely confusion.

The expectation of consumer care also plays into this analysis. Products such as baking powder are typically purchased with moderate attention to detail, given their specific use in cooking. The assumption is that consumers are likely to notice differences in product branding that would prevent confusion, even if the trademarks are somewhat similar. 

Conclusion

In conclusion, the opposition to the registration of the mark “SUPA MANDAZI” ultimately failed because the Assistant Registrar found that, taken as a whole, the Applicant’s mark was sufficiently distinct from “CHAPA MANDASHI” and was unlikely to cause confusion or deception in the marketplace. Although both marks operated in the same product category and shared some common descriptive elements and colours typical of baking powder packaging, the Registrar held that those shared features were not, in themselves, distinctive and could not be monopolised by one trader. Greater weight was placed on the overall get up, the different dominant verbal elements (“SUPA” versus “CHAPA”), the visual layout, the differing devices, and the phonetic differences between “MANDAZI” and “MANDASHI”. The absence of any evidence of actual confusion despite concurrent use further undermined the Opponent’s claim. The Registrar therefore concluded that section 15(1) of the Trade Marks Act had not been offended and allowed the “SUPA MANDAZI” mark to proceed to registration, reinforcing the principle that trademark protection in Kenya does not extend to commonplace, descriptive elements but to the overall distinctive character of the sign as perceived by reasonably attentive consumers.

Ruling available here.