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Establishing Trade Mark Infringement

The High Court in Nairobi determined in the case of Landor LLC & another v Wagude Lui T/A Landor & Associates & 2 others Civil Case 266 of 2015 that in establishing a trade mark infringement claim, proof of likelihood of deception and confusion is required as opposed to a likelihood of confusion or deception S.7 of the Trade Marks Act (cap 506).

The court raised three issues for determination in the case;

1. What were the conditions to be met in an action for trade mark infringement?

2. Whether it was necessary to prove actual confusion and deception as opposed to a likelihood of confusion or deception, amongst members of the public as concerned the question as to

whether a mark related to goods and services on offer was connected with a certain trademark.

3. When a defence of prior use can be available in a trade mark infringement action.

Under Section 7(1) of the Trade Marks Act, the conditions to be met for an act of infringement are;

a) The proprietor has to be the registered owner of the trade mark.

b) The alleged infringement has to be a mark identical or nearly resembles that of the registered mark such that it is likely to deceive or cause confusion in the course of trade or in connection with the provision of services in respect of which it was registered.

c) The mark has been used without the consent or authority of the proprietor; and

d) The mark has been used in a manner that is likely to cause injury or prejudice to the proprietor or licensee of the trade mark.

A proprietor whose rights have been infringed has to prove that the offending mark is identical with or so nearly resembles the registered trade mark and that because of that resemblance, the offending mark is likely to deceive or cause confusion in the course of trade or in connection with the provision of services of the registered trade mark.

This finding adds an extra condition to section 7 (1) of the Act which benchmarks a likelihood of confusion or deception as the minimum standard. The court referenced S. 36(1) of The South African Trade Marks Act (194 of 1993) and the Supreme Court of South Africa decision in the case of Extraction (pty) ltd vs. Tyrecor (pty) Ltd (20185/2014) 2015 ZASCA 78 where the court stated;

The underlying purpose of this section is to prevent a proprietor of a trade mark from exercising rights merely on the basis of priority of registration and it preserves whatever common-law rights there may be antecedent to the rights of the registered proprietor.  A party relying on this defence must establish bona fide and continuous use of the mark, either by itself or by its predecessor in title, at a time prior to the use or registration of the registered mark by the proprietor thereof, whichever is earlier.  In this case registration was the earlier date”.

With regard to the defence of prior use, the Trade Mark Act (S. 10) provides for continuous but not bonafide use of the mark, the defence is only available if there has been continuous and bonafide use of the trade mark. This prevents malicious use of registration such as frustrating subsequent registration of a mark by the true proprietor.



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