Trademark Infringement
Mjengo Limited v Manji Food Industries Limited [2020] KEHC 2349 (KLR)
Facts
Mjengo manufactured "Nuvita Vitamilk Milky Biscuits" ("Nuvita Blue") since 2009 in blue/white 4-piece packets. Manji launched "Milky Day" biscuits in similar packaging in 2011, later switching to 5-piece packs resembling Nuvita's. Mjengo sued for passing off.
Issues
Whether Mjengo had established sufficient goodwill in the Nuvita get-up, and whether Manji's Milky Day packaging amounted to deceptive imitation causing confusion.
Rule
Trade Marks Act s.15A(1) (well-known marks); the classic passing-off trinity from Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 34; the goodwill definition from Commissioner of Inland Revenue v Muller & Co Margarine Ltd [1901] AC 217; Newton Oirere Nyambariga v KCB Bank Kenya Ltd [2017] eKLR; Rothmans of Pall Mall Ltd v Independent Tobacco FZE [2019] eKLR; Pastificio Lucio Garofalo SPA v Debenham & Fear Ltd [2013] eKLR; CDL Hotels International Ltd v Pontiac Marina Pty Ltd [2000] 1 LRC 243.
Analysis
The court held passing off requires proof of goodwill, misrepresentation and damage. Although Nuvita predated Milky Day by roughly two years, Mjengo offered no sales figures, survey data or documented consumer recognition — only a single trader's unsubstantiated testimony and excluded hearsay — falling short of proving goodwill despite the court accepting that even a short market presence could theoretically suffice if properly proven.
Conclusion
Suit dismissed with costs to Manji; Mjengo failed to prove the essential element of goodwill.
Judgement available at kenyalaw.org.