IP Case Law library

Facts

On 18 February 2009, Mobile Telecommunications Company K.S.C. (the Applicant) sought to register the trademark “ZAP PESA MKONONI” under Classes 9, 35, 36, and 38. These covered goods and services in telecommunications, financial affairs, and business management. The Registrar rejected registration in Class 16 owing to an existing identical “ZAP” mark registered by Plutos Holdings Ltd. but approved publication for the remaining classes.

Ngoko Enterprises Limited (the Opponent) filed a notice of opposition on 26 May 2009, claiming ownership of “ZAP” under Trade Mark No. 58391 (Class 3) for soaps, detergents, and cleaning products registered in 2006. They argued that “ZAP PESA MKONONI” infringed their statutory rights and would confuse consumers who associated “ZAP” with their brand. They cited sections 2, 7, 8, 15, and 46 of the Trade Marks Act, asserting that an ordinary consumer would not distinguish between classes and would likely assume an association between their goods and the Applicant’s mobile money services. 

The Applicant denied these claims, contending that their services were entirely distinct in nature and class from the Opponent’s goods, and that the marks were visually and conceptually different. They also highlighted the existence of other prior registrations of “ZAP”, notably by Plutos Holdings Ltd., to demonstrate that Ngoko’s ownership was not exclusive. Both parties filed statutory declarations supporting their positions, and the Assistant Registrar, Ms. Eunice Njuguna, delivered her ruling on 26 November 2010.

Issue

Whether the Applicant’s trademark “ZAP PESA MKONONI” was so similar to Ngoko Enterprises’ “ZAP” mark as to cause confusion or deception under section 15(1) of the Trade Marks Act (Cap 506). 

Rule

The decision was guided primarily by section 15(1) of the Trade Marks Act, which prohibits registration of a mark that is identical or resembles another already registered in respect of the same goods or description of goods, or the same services or description of services.

The Assistant Registrar also invoked relevant judicial authorities and commentaries, including British Sugar Plc v James Robertson & Sons Ltd, Hart v Colley, J & J Colman Ltd’s Application, In re Ladislas Jellinek, and the WIPO Intellectual Property Handbook. These authorities collectively emphasize that confusion is assessed by considering whether the marks cover similar goods or services, share trade channels, or target the same consumers.

Furthermore, reference was made to Kerly’s Law of Trade Marks and Bentley & Sherman’s Intellectual Property Law, which establish that trademark protection is limited to the goods or services for which the mark is registered.

Analysis

The Assistant Registrar first clarified that under section 15(1), similarity must be assessed not merely by visual or phonetic comparison of marks but by analysing the nature of the goods and services in question.

Ngoko’s mark “ZAP” was registered in Class 3, which encompasses cleaning, perfumery, and cosmetic products. In contrast, “ZAP PESA MKONONI” covered telecommunications and financial services under Classes 9, 35, 36, and 38. By applying the Nice International Classification of Goods and Services, the Registrar found that these categories were fundamentally different in nature, trade channels, purpose, and consumer perception.

Drawing on British Sugar Plc v James Robertson & Sons Ltd, the Registrar evaluated the comparative uses, users, physical nature, and marketing channels of both parties’ products. The decision noted that purchasers of soaps and detergents differ significantly from those engaging in mobile money transactions. The likelihood that consumers would assume both came from the same source was therefore implausible.

The Registrar also highlighted that the Trade Marks Register contained several identical marks registered in different classes (e.g., MAX, JOGOO, and LION) by various proprietors, demonstrating that coexistence of identical words across unrelated classes was a recognized feature of trademark law.

The Opponent’s argument that ordinary Kenyan consumers lack sophistication and would be confused by the similarity of names was dismissed. Citing Kerly’s Law of Trade Marks and Reed Executive Plc v Reed Business Information Ltd, the Registrar reasoned that consumer of cleaning products or financial services act deliberately and with reasonable care. The fact that some customers or retailers expressed surprise did not amount to legal proof of confusion.

The Registrar further held that Ngoko’s rights extended only to Class 3 and could not block the use of “ZAP” in other classes. To extend protection beyond its registration would contradict the structure of the classification system and established trademark principles reaffirmed in Hart v Colley and Ainsworth v Walmslay.

Ultimately, the Registrar concluded that the Applicant’s mark was not confusingly similar to the Opponent’s mark because the goods and services were dissimilar in function, market, and consumer perception.

Conclusion

The Assistant Registrar found that “ZAP PESA MKONONI” and “ZAP” related to entirely different goods and services and that there was no likelihood of confusion among consumers. Consequently, Ngoko Enterprises failed to establish its opposition under section 15(1) of the Trade Marks Act. The Applicant, Mobile Telecommunications Company K.S.C., was entitled to register “ZAP PESA MKONONI” under Classes 9, 35, 36, and 38. The opposition was dismissed with costs awarded to the Applicant.

Ruling available here.