KIPI Trademark Rulings
IN THE MATTER OF AN APPLICANT TO EXPUNGE T.M.A NO.57546 IN CLASS 21 IN THE NAME OF CASABELLA ASSOCIATES LIMITED AND EXPUNGEMENT THERETO BY CORNING INCOPORATED
Facts
The case involved an application for the expungement of Trademark No. 57546 from the Kenya Industrial Property Institute (KIPI) register. The trademark, registered for particular goods, had been on the register for an extended period, but the applicant for expungement provided evidence showing no genuine use over the statutory five-year period. The applicant submitted affidavits, market surveys, and records indicating the mark's inactivity in commerce. The registered proprietor did not file a counter-statement or appear to contest the application, resulting in the claims of non-use standing unchallenged.
Issue
The key issue was whether Trademark No. 57546 should be removed from the register due to non-use, as alleged by the applicant. This necessitated assessing if the mark had remained unused for five consecutive years, thereby failing to distinguish the proprietor's goods and warranting expungement to avoid obstructing other traders and maintaining the register's integrity.
Rule
Under Section 29 of the Trade Marks Act (Cap 506) of Kenya, a trademark could be expunged if it had not been used in good faith for five years prior to the application. The rule required that trademarks actively function as indicators of origin in trade, with non-use leading to cancellation to prevent monopolies over dormant marks and promote fair competition.
Analysis
The Registrar reviewed the evidence of non-use, including unchallenged affidavits and absence of commercial activity, and determined it met the statutory threshold. The proprietor's failure to respond strengthened the case for expungement. The analysis addressed IP concerns such as the erosion of distinctiveness through inactivity, which could hinder new registrations and distort market dynamics. Retaining the mark would have prejudiced public interest by cluttering the register with ineffective entries.
Conclusion
The Registrar ordered the expungement of Trademark No. 57546, concluding that the proven non-use over five years rendered it invalid for continued registration. This decision preserved the trademark system's effectiveness by eliminating unused marks, balancing proprietor rights with broader market access. The ruling reinforced the necessity of genuine use for trademark protection.
Ruling available here.