IP Case Law library

In Re TMA No. 67586 “KENYA BOYS CHOIR”, EXPUNGEMENT BY KENYAN BOYS CHOIR., 27 February 2015

Facts

The Applicant, Kenyan Boys Choir, filed an application challenging the issue of the trademark “KENYA BOYS CHOIR” to the Proprietor, Joseph Muyale Inzai, who had registered it under the international classes 16 and 41 of the International Classification of Goods and Services for Purposes of Registration of Marks. Inzai argued that they founded the choir and thus had proprietary rights and interests in the name given that it had been in use for over a decade gaining distinctiveness. The Applicants sought to have the mark expunged from the register of trademarks on the grounds that it violated section 35 of the Trade Marks Act.

Issues

1. Whether the Proprietor has a valid and legal claim to the mark “KENYA BOYS CHOIR” (WORDS) before applying to register the mark as provided for under section 20(1) of the Trade Marks Act?
2. Whether the Applicants aggrieved persons in accordance with the provisions of section 35(1) of the Trade Marks Act?

Rule

Trade Marks Act (No. 51 of 1955)

Section 20 (1) - provides that a person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous of registering it shall apply in writing to the Registrar in the prescribed manner for registration either in Part A or in Part B of the Register.

Section 35 (1) - provides that any person aggrieved by the non-insertion in or omission from the register of an entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply and the court or the Registrar, may make such order for making, expunging or varying the entry as the court or the Registrar may think fit.

The decision recalled the precedent set out in the UK case of Powell v The Birmingham Vinegar Brewery Co Ltd, (1894) A.C. 8, where the Court held that an aggrieved person includes any person who may have his legal rights limited due to the fact that a mark that ought not to be in the Register of Trade Marks remains in the Register.

Analysis

In arriving at its decisions, the registrar noted that there was a high potential that the mark would cause confusion among the unsuspecting public given that the Applicant had demonstrated that the longstanding reputation and use of the name “Kenyan Boys Choir”. The tribunal noted that the Proprietor did not have a valid and legal claim over the mark as per section 20(1) of the Trade Marks Act due to an existing dispute between the parties, which attempted to circumvent through registration pending its determination. This attempt  did not amount to good faith thus invalidating their claim. With regard to section 35 (1), the tribunal noted that the Applicant had a right to seek the purity of the mark given that the Proprietor had irregularly obtained it.

Conclusion

The Applicants were successful in having the proprietor’s trademark expunged from the trademark registry due to the lack of its distinctiveness with the Applicant’s choir. This piece agrees with the registrar’s approach given that the longstanding use of the name by the applicants had become familiar to the public and they associated the name with the choir.

Ruling available here.