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. 119119 “MEMBER’S MARK” (WORD) IN THE NAME OF WALMART APOLLO, LLC Ex-Parte Ruling by Assistant Registrar of Trade Marks, Delivered on 14th No
Tags:
Facts
On 8th September 2021, Walmart Apollo, LLC applied to register the word mark “MEMBER’S MARK” in Kenya under Classes 29, 30, and 32 of the International Classification of Goods and Services. These classes cover a range of goods including food products, beverages, and other consumables. Upon examination, the Kenya Industrial Property Institute (KIPI) through its Trade Marks Examiner raised an objection, requesting the Applicant to disclaim the right to exclusive use of the word “MARK” apart from the mark as a whole, on the basis that it was non-distinctive and common to the trade.
Walmart responded with a written submission dated 3rd October 2022, contesting the disclaimer request. They argued that the word “MARK” is neither descriptive nor laudatory in relation to the goods applied for and that there is no objective relationship between “MARK” and the goods in Classes 29, 30, and 32. Walmart also pointed to international practice, noting that many jurisdictions have registered the mark “MEMBER’S MARK” without any disclaimer requirement.
Issue
The central issue for determination was whether the Applicant should be required to disclaim the word “MARK” from the composite mark “MEMBER’S MARK” before the mark can proceed to publication, in accordance with the requirements of the Trade Marks Act (Cap 506, Laws of Kenya).
Rule
The applicable legal framework is Section 17 of the Trade Marks Act, which empowers the Registrar to require a disclaimer where:
A trademark contains matter not separately registered by the proprietor as a trademark; or
It contains matter common to the trade or otherwise of a non-distinctive character.
The jurisprudence referred to included:
The Registrar of Trade Marks v Ashok Chandra Rakhit Ltd (1955), where the Indian Supreme Court emphasized that the purpose of a disclaimer is to define and limit the rights of the proprietor, thus preventing exaggerated claims over non-distinctive elements.
Paco Holdings Ltd v Paco Rabanne Parfums (1999), which confirmed that a disclaimer indicates the disclaimed part is not inherently distinctive.
W & G du Cros’ Application [1913] and other authorities underscoring that traders should be free to use common trade elements unless there’s an improper motive.
The KIPI Trade Marks Manual and relevant cases from jurisdictions such as Australia further clarified that a disclaimer does not affect registrability, but is used to notify others that no monopoly is claimed over certain non-distinctive parts of a mark.
Analysis
The Applicant contended that “MARK” is neither descriptive nor indicative of the nature or quality of the goods. The Registrar, however, emphasized that distinctiveness is judged within the context of the trade and from the perspective of other traders in the same field. The mark must be able to distinguish the goods of one trader from those of another, and non-distinctive elements cannot form the basis of exclusive rights.
Use of “MARK” in the Trade
A review of the Trade Marks Register revealed that “MARK” is commonly used in other registered trademarks in the same classes. Examples included:
KEBS Standardization Mark
Phulka ATTA MARK
WINNIE’S PURE HEALTH ATTA MARK
All these marks were registered subject to a disclaimer of the word “MARK.” This indicated a pattern of practice by the Registrar and the established commonness of the word “MARK” in the relevant industry.
Walmart argued that the mark has been accepted in other jurisdictions without disclaimers. However, the Assistant Registrar noted that foreign registrations are persuasive, not binding in Kenya. Each jurisdiction retains autonomy in interpreting distinctiveness and protecting the interests of local traders and consumers.
The ruling reiterates a core principle of trade mark law: trademark protection is not intended to allow monopolies over generic or common terms, especially where such terms are needed by others in the same trade. Allowing a single trader to claim exclusive rights over “MARK” in food and beverage categories would impede fair competition and violate public interest.
Conclusion
The Assistant Registrar concluded that the word “MARK” is common to the trade and lacks distinctiveness in the context of goods under Classes 29, 30, and 32. As such, the Applicant cannot claim exclusive rights over that element of the mark.
Accordingly:
The Examiner’s request for a disclaimer of the word “MARK” is upheld.
The application shall not proceed to publication unless the Applicant disclaims the word “MARK” separately and apart from the mark as a whole.
The ruling was delivered on 14th November 2024 by Concilia Were, Assistant Registrar of Trade Marks.