KIPI Trademark Rulings
IN THE MATTER OF THE TRADE MARKS ACT AND IN THE MATTER OF TRADE MARK NOS. 63725 ‘WAKILISHA LIMITED .. TOTALLY REPRESENTING (WORD AND DEVICE) AND 64269 ‘WAKILISHA’ (WORD AND DEVICE) IN THE NAME OF WAKILISHA LTD AND EXPUNGEMNT PROCEEDINGS BY VISISON 2030 DE
Facts
The case revolved around an expungement proceeding initiated by the Vision 2030 Delivery Secretariat (the Applicant), a Kenyan government entity responsible for overseeing the implementation of Kenya's Vision 2030 development blueprint, against Wakilisha Ltd (the Respondent), a private company. On January 23, 2012, the Applicant filed two applications with the Kenya Industrial Property Institute (KIPI) to expunge Trade Mark No. 63725 "WAKILISHA LIMITED ..TOTALLY REPRESENTING.." (Word and device) in Class 16 (covering paper, printed matter, and related goods) and Trade Mark No. 64269 "WAKILISHA" (word and device) in Class 41 (covering education, training, entertainment, and cultural activities), both registered in the name of the Respondent. The Applicant argued that the marks were deceptively similar to elements associated with Vision 2030, potentially causing confusion and misleading the public into believing the Respondent's goods or services were affiliated with the national development agenda. Procedural history included the Respondent's opposition, with written submissions exchanged between the parties. A hearing took place on July 17, 2013, before the Registrar of Trade Marks, Dr. Henry Kibet Mutai, with representations from John Syekei of Coulson Harney for the Applicant and Wanjiku Muriu of Wanjiku Muriu & Co. for the Respondent. Evidence included affidavits, market surveys demonstrating public association of "Wakilisha" with Vision 2030 initiatives, and records showing the Respondent's use of the marks in promotional materials that mimicked government branding.
Issue
The primary issue was whether Trade Marks Nos. 63725 and 64269 should be expunged from the KIPI register on grounds of deceptive similarity, likelihood of confusion, or bad faith registration, as alleged by the Applicant. This required determining if the Respondent's marks infringed upon the Applicant's unregistered but widely recognized branding associated with Vision 2030, thereby violating principles of fair competition and public interest under Kenyan trademark law.
Rule
Under the Trade Marks Act (Cap 506) of Kenya, Section 29 allowed for the expungement of a registered mark if it was entered without sufficient cause or wrongfully remained on the register, including cases of deceptive similarity under Section 15, which prohibited registration of marks likely to deceive or cause confusion. The rule emphasized that trademarks must not mislead the public regarding the origin or affiliation of goods or services. Precedents such as Sabel BV v Puma AG (1998) guided the assessment of similarity through visual, phonetic, and conceptual lenses, while local cases like E.A. Industries Ltd v Trufoods Ltd (1992) reinforced that government-associated marks warranted heightened protection to prevent unauthorized exploitation of national symbols or initiatives.
Analysis
The Registrar meticulously evaluated the evidence, noting the phonetic and conceptual resemblance between "Wakilisha" (Swahili for "represent" or "advocate") and Vision 2030's thematic emphasis on national representation and development. The Applicant's market surveys demonstrated that consumers associated "Wakilisha" with Vision 2030's advocacy efforts, creating a likelihood of confusion that could dilute the government's branding integrity. The Respondent's failure to provide compelling evidence of independent creation or prior use weakened their defense, suggesting possible bad faith in adopting a mark evocative of a national program. Intellectual property issues fleshed out included the tension between private trademark rights and public interest in protecting state-affiliated symbols, as unregistered marks like Vision 2030's could still prevail under passing-off principles if goodwill was established. The analysis highlighted how deceptive marks undermined consumer trust and fair competition, particularly in educational and cultural sectors (Classes 16 and 41), where public misattribution could harm national development goals. The Registrar weighed the balance of convenience, concluding that retention of the marks would prejudice the Applicant more than expungement would harm the Respondent, given the latter's limited market presence.
Conclusion
The Registrar ruled in favor of the Applicant, ordering the expungement of Trade Marks Nos. 63725 and 64269 from the register, as their deceptive similarity to Vision 2030 elements posed a clear risk of public confusion. This outcome affirmed the protective role of trademark law in safeguarding national initiatives from commercial exploitation, setting a precedent for future disputes involving government branding.
Ruling available here.