Trademark Infringement
Osho Chemical Industries Limited v Moiben Connections Limited & another (Commercial Case E010 of 2023) [2023] KEHC 2315 (KLR) (17 March 2023) (Ruling)
Facts
Osho Chemical, registered proprietor of "MISTRESS" (TM No. 78539, classes 1 and 5) since 2013 for agrochemicals, sued Moiben Connections and Jojemi East Africa alleging their "IMPRESS" fungicide (TM No. 113851) used a deceptively similar name, get-up and yellow packaging to pass off as MISTRESS. Osho sought an interlocutory injunction and an account of profits.
Issues
Whether the defendants' use of "IMPRESS" constituted trademark infringement or passing off warranting an interlocutory injunction.
Rule
Trade Marks Act (Cap 506) s.7 (exclusive rights of a registered proprietor); the Giella v Cassman Brown [1973] EA 348 three-part injunction test; Nguruman Ltd v Jane Bonde Nielsen [2014] eKLR (sequencing of the test); Mrao Ltd v First American Bank [2003] eKLR (prima facie case standard); Solpia Kenya Ltd v Style Industries [2015] eKLR; Cut Tobacco Kenya Ltd v British American Tobacco [2001] eKLR (no property right in colour alone).
Analysis
Applying Giella, the court compared the marks conceptually, visually and phonetically, finding "MISTRESS" and "IMPRESS" differed in their first letters and overall pronunciation and meaning, sharing only the letters "RESS". On packaging, both used yellow, but the plaintiff's had blue/green stripes absent from the defendant's — the court found the get-up distinguishable to an ordinary consumer.
Conclusion
Application for injunction dismissed with costs to the defendants; the plaintiff failed to establish a prima facie case, so ancillary relief (account of profits) was also refused.
Ruling available at kenyalaw.org.