IP Case Law library

Cut Tobacco Kenya Ltd v British American Tobacco (K) Ltd 2001

 Facts 

Cut Tobacco Kenya Limited is appealing a decision that restrained them from infringing upon a trademark known as ‘Sportsman’ by manufacturing, exporting, or selling the cigarette brand. The respondent,  British American Tobacco (BAT), is the registered owner of a trademark known as ‘Sportsman’ registered in 1965. The packaging of Sportsman is a soft packet with white and red colours with the words Sportsman prominently shown on the white part of the packet in red lettering. The white colour occupies a third of the packet and the middle red portion had a head of a horse bound in a yellow circle. The appellant has had a cigarette brand called Horseman since 1955 in a blue and white coloured packet. However, in 1988, the company changed the packaging to a red or maroon coloured packet with two narrow white bands on the top and bottom with the brand prominently printed. It substituted the original logo and two horses with a picture of a jockey riding a horse.  BAT instituted a suit claiming that CUT had infringed its ‘Sportsman’ trademark by using a deceptive imitation of the get-up and configuration of its packaging and that it was passing off its brand of cigarettes as being associated with BAT. 

Issues 

1. Whether the ‘Sportsman’ logo has been infringed upon. 
2. Whether Cut Tobacco’s use of a similar packaging constitutes passing off. 
3. Whether the court applied the correct legal principles in granting a temporary injunction against CTK.

Rule

Issue One

Acktiebolget Jonkeping - Vulcan Industrictsfabriksatebolag v. East African Match Company (1964) EA- The burden of satisfying the court that there has been an infringement of its trademark is on the plaintiff company. It is for the plaintiff company to show that there is a resemblance between the two marks, and that such resemblance is deceptive. It is also a well-established principle of law that it is the duty of the judge to decide whether the trademark complained of so nearly resembles the registered trademark as to be likely to deceive or cause confusion in the minds of the public.

Issue Two

Reddaway v. Banham (1896) AC 199- Nobody has a right to represent his goods as the goods of someone else.

Issue Three

Giella v. Cassman Brown & Co. Ltd (1973) EA- the granting of an interim injunction is at the court’s discretion after consideration of the following elements:
 

1. A prima facie case with a probability of success
2. Risk of irreparable injury
3. Balance of convenience

Analysis

This case between Cut Tobacco Kenya Ltd and British American Tobacco (K) Ltd delved into a dispute over trademark infringement and the alleged passing off of one brand's cigarettes as another's. The central issues involve the striking similarity between the 'Sportsman' and 'Horseman' cigarette packaging, which potentially misleads consumers due to comparable design elements and colour schemes. The appellant, Cut Tobacco, altered their packaging to closely mirror that of the well-established 'Sportsman' cigarettes, which included similar colour patterns and thematic imagery, ostensibly to leverage the market presence and consumer recognition of the 'Sportsman' brand.

The court was tasked with determining whether these similarities were likely to cause confusion among consumers and whether they constituted an infringement of trademark rights or an act of passing off. The analysis required assessing the visual and thematic elements of both cigarette packages to evaluate the potential for consumer confusion. The legal framework guiding this assessment focuses on trademark protection, which grants the holder exclusive rights to use a registered mark in a way that distinguishes their goods or services from others. The concept of 'passing off', on the other hand, protects the goodwill attached to unregistered trademarks by preventing other businesses from misrepresenting their goods as those of another business.

The judgement revolved around the application of principles governing temporary injunctions in trademark disputes. The court underscored that such decisions should hinge on whether there is a prima facie case with a probability of success and whether irreparable damage would occur without an injunction. However, it criticised the lower court's approach, suggesting it inappropriately resolved the matter as if at a trial, thereby overstepping the bounds of a preliminary injunction assessment. This highlights the nuanced judicial approach required in interlocutory proceedings, which should not preempt the trial's findings by resolving substantive issues prematurely.

Ultimately, the appellate court's decision to set aside the injunction reflects judicial restraint, emphasising the need for a full trial to thoroughly assess the facts and evidence. This case illustrates the complexity of intellectual property disputes, especially in industries where branding and trademark are crucial for consumer recognition and product differentiation. The decision also serves as a precedent for how courts might handle similar disputes, balancing the need to protect intellectual property rights against the need to prevent unwarranted judicial overreach in preliminary stages of litigation.

Conclusion

The appellate court allowed the appeal, set aside the lower court's orders, and dismissed BAT's application for a temporary injunction. This decision underscores the importance of adhering to established legal standards at the interlocutory stage and reserving detailed factual determinations for the trial stage.

Judgement to be found here