‘Mambo Ni Matatu’ Trademark Application: An Intellectual Property Perspective

On 26 June 2023, the Registrar of trademarks determined a case that challenged the registration of a trademark and shed light on the registration of Geographical Indications in Kenya. The matter commonly referred to as the “Tinderet Case” can be traced back to 22 December 2017 when George Williamson & Co. Limited (the proprietor) filed an application to register their trademark “TINDERET TEA FARM” before the Registrar of Trade Marks at the Kenya Industrial Property Institute (KIPI).

The Registrar of Trade Marks subsequently examined the mark, approved it and it was eventually entered in the Register of Trade Marks with effect from 22^nd December 2017 and a Certificate of Registration was issued. However, the Applicants in the matter challenged the decision to have the mark included in the Register of Trade Marks in Kenya.

The Applicants claimed that the ‘Tinderet Tea Farm’ mark failed to meet the requirements for registration under section 12 (1) (d) of the Trademarks Act. Further, the Applicants asserted that while they had no commercial interest in the use of the mark, they were exercising the right to engage in public interest litigation as provided in the Constitution of Kenya. The Constitution of Kenya provides that, ‘Court proceedings may be instituted by a person acting in the public interest…’¹ The interest of the Applicants was to ensure that there was purity in the Register of Trade Marks and also the jurisprudential value of the practice of Trade Marks Law in Kenya.

Expungement claims and the case for Geographical Indication

The Applicants based their claims on three main issues namely: geographical description of the Tinderet area, distinctiveness of the mark, and registration of a geographical indication. Concerning the first issue, the Applicants claimed that Tinderet is a tea growing area located in Nandi County and it is also a name of a politically demarcated Constituency with constituents that also has a representative in Parliament-Tinderet Constituency. Additionally, the Kenya Tea Development Agency (KTDA) has classified the area as a tea-growing zone with unique climatic conditions that influence the quality of tea produced in the area. The Applicants, therefore, claimed that the proprietors’ mark is an ordinary signification of a tea farm in Tinderet contrary to section 12(1) (d) of the Trade Marks Act.² They also relied on section 20 of the Trade Marks Act which empowers the Registrar or the court to correct any errors connected with the application or permit an Applicant to amend their application.

The slogan “Mambo ni matatu” emanated from President William Ruto when he warned sugar cartels harshly.¹ The slogan which means three things, was condemned by the Law Society of Kenya (LSK), opposition leaders and human rights groups.² This is because the President warned sugar cartels of three things namely, jail, deportation or ascension to heaven.³ Subsequently, the phrase went viral and some entrepreneurs printed it on merchandise like T-shirts.⁴

Recently, it emerged that the President’s lawyer had made an application to the Kenya Industrial Property Institute (KIPI) seeking to have the slogan together with its accompanying mark officially registered as a trademark.⁵ According to the lawyer, registration of the phrase denies the public from commercially using the numeral 3 sign.⁶ Therefore, anyone who wishes to commercially use the phrase and mark must obtain consent from the president. A look into the KIPI journal that was published on 30^th September 2023 indicates that the application for registration of the trademark was accepted and subsequently advertised so that individuals who wish to oppose the registration of the trademark may do so by lodging a notice of opposition together with the requisite fee⁷ within 60 days from the date of advertisement in the journal.

The publication and advertisement of the trademark is in line with the provisions of the Trade Marks Act 2012, which requires the registrar to advertise trademark applications that have been accepted for registration.⁸ The Act further states that any individual may within the prescribed advertisement period give notice of opposition to the registrar in writing and it should include a statement of the grounds of opposition.⁹ According to the KIPI journal the prescribed advertisement period is 60 days from the date of the journal (30^th September 2023)¹⁰ and this therefore means that the public can still oppose registration of the president’s trademark up until the end of November 2023.

Trademark registration of slogans

A trademark can be described as a distinctive sign which distinguishes goods or services produced by one enterprise from those of another.¹¹ According to the Kenyan Trade Marks Act, a mark includes a ‘distinguishing guise, letter, slogan, device, brand, heading…letter or numeral or any combination thereof whether rendered in two-dimensional or three-dimensional form.’¹² For a trademark to be registered in Kenya it must be distinctive, meaning that it should be able to distinguish goods or services of a proprietor from others.¹³ It should also not be deceptive, cause confusion, or be contrary to law, morality, or any scandalous design.¹⁴ Additionally, it should not be identical or closely resemble a mark belonging to a different proprietor that is already registered for the same goods or description of goods or for services.¹⁵

It is important to note that a trademark will be registered if it is in respect of particular goods or services.¹⁶ For instance in the case of Audi AG v OHIM¹⁷ a slogan (“Vorsprung durch Technik” which means advance or advantage through technology) was applied for trademark registration for specific goods and services relating to safety and security equipment, vehicles, motor parts and others. The court in its findings determined that the slogan can be perceived as a promotional formula and also an indication of the commercial origin of the goods and services.¹⁸

This therefore implies that registration of the slogan, ‘mambo ni matatu’ does not restrict its usage in speeches or personal use but instead the trademark protection is limited to commercial use of the class that the owner has sought trademark protection. In Kenya, the Nice Classification which is an international classification of goods and services is used for selecting classes that the owner wishes to correspond with the trademark.¹⁹ The Nice Agreement classifies trademarks into 45 trademark classes namely, 1 to 34, which covers goods and 35 to 45 which covers services.²⁰ The reason why the system exists is to specify and limit the extension of the trademark right by determining the goods or services covered by the mark.²¹

According to the KIPI journal, the classes chosen to correspond with the president’s trademark application are:

1. 25(clothing, footwear, headgear)

2. 28(Games and playthings; gymnastic and sporting articles)

3. 35(Advertising; business management; business administration; office functions)

4. 38(Advertising; business management; business administration; office functions)

5. 41(Education; providing of training; entertainment; sporting and cultural activities) and

6. 45 (Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals).

The specified classes above implies that the trademark protection is solely for the indicated goods and services and therefore the commercial use of the mark by another party in relation to similar goods and services will result in trademark infringement. However, it is possible to use the same mark as long as it is assigned to a different class of goods and services and there is no likelihood of confusion.²²

The exclusive right to the use of a slogan was examined in the case of Mathew Ashers Ochieng v Kenya Oil Company Limited and another.²³ In this case, the plaintiff had registered the trademark “proudly Kenyan” under class 35 in part A of the register. The plaintiff alleged that the defendants had produced, used and circulated stickers with the mark in the cause of their business or trade. Therefore, the use of the mark “proudly Kenyan” infringed his trademark and would likely deceive or cause confusion since it indicated a connection between the plaintiff and the goods or services offered by the defendants. The plaintiff therefore applied for an injunction restraining the defendants, their agents or servants from producing, using, circulating or otherwise dealing with the mark in the course of their trade, business or advertisement.

However, in dismissing the application, the judge noted that the goods and services provided by the plaintiff were entirely different from those of the defendant hence they would not easily cause confusion. Further, the judge held that for the plaintiff to seek protection of the words “proudly Kenyan” he must establish that the words are associated with him and the association is because he is the originator of the words and therefore he has exclusive rights to restrict its usage. The judge noted that the words are common and can be rightly and legally identified with all proud Kenyans and cannot become distinctive and exceptional to the direction, permission, consent or use of the plaintiff. The judge concluded by noting that the use of descriptive expressions or slogans like “proudly Kenyan” cannot entitle the plaintiff to a relief of injunction because of possessing a registration document. This is because the words are widely used and familiar with the public domain and therefore no party can restrict its use. Although the judgment is a useful precedent in the trademark protection of slogans, the ratio decidendi (rationale for the decision) of the judgment seems partly erroneous. This is because aside from the legal requirements of trademark registration provided in the Kenya Trademarks Act, the judge noted that other elements must be established like novelty, non-obviousness and inventive step among others. The intellectual property elements that the judge included are applicable to other intellectual property rights like patents hence not considered in trademark protection.

Prior to the registration application of the slogan ‘Mambo ni matatu’ some entrepreneurs had already started printing t-shirts with the slogan although using different marks.²⁴ The question that arises is what happens in a case where the entrepreneur(s) continue branding the t-shirts even though the symbol accompanying the ‘Mambo ni matatu’ slogan is different. This brings up the issue of the likelihood of confusion. As earlier indicated, for a trademark to be registered in Kenya, it should not cause confusion. The likelihood of confusion may arise when two trademarks are very similar or the goods or services are closely related that customers may mistakenly believe that they are from the same source.²⁵

In determining the likelihood of confusion three factors must be considered, namely the resemblance between the marks, the strength of the marks and the similarity of products or services.²⁶ The likelihood of confusion was examined in the case of Landor LLC and Wpp Luxembourg Gamma Sarl v Wagude Lui t/a Landor& Associates & 2 others²⁷ where the plaintiffs sought a permanent injunction restraining the defendants from advertising, marketing, trading or in other way using or dealing in the name “Landor and Associates” or any other name closely resembling the second plaintiff’s name “LANDOR ASSOCIATES.” The basis of the application was that the use of the name would likely deceive or cause confusion. The court in this case concurred with the plaintiff’s argument that actual deception or confusion need not be proved and it is therefore enough to show that deception or confusion is likely. However, in some cases, proof is necessary for example where the plaintiff seeks damages for the infringement.²⁸

Finally, although the Trademarks Act prohibits the registration of identical trademarks which are in the same class of goods and services, an exemption is in the case of honest and concurrent use. This is a common law doctrine which ‘allows parties who had previously honestly used their marks although resembling one another and in relation to the same goods, to co-exist in the same market.’²⁹ The registrar may permit the registration of such trademarks³⁰ although the use must be honest and should not have caused confusion to customers before.³¹

The trademark application for the slogan ‘Mambo ni matatu’ elicited various reactions from the public, however, factoring in the legal considerations discussed, it is clear that the slogan is associated with commercial goods and services and there is no need to fret when using it in normal conversations.

Image is from wikimedia.org

 

³

In supporting their expungement claim, they relied on section 35(1) of the Trade Marks Act which empowers the Registrar to make an order for expunging or varying an entry in the Register. The Applicants claimed that if the proprietors’ mark remained in the Register, there was a high likelihood that the proprietors may misuse, prevent, limit and control its use by the people of Tinderet or traders and tea farmers from the region.

The second issue of contention the Applicants raised involved the lack of distinctiveness of the proprietors’ mark. The Applicants claimed that the proprietors’ mark was incapable of distinguishing the proprietors’ tea and related products from those of other producers, traders and even farmers that had been produced in Tinderet. They relied on section 13 of the Trade Marks Act which prohibits the registration of trademarks that are incapable of distinguishing goods or services that a registered owner is connected with in the course of trade from other goods or services where no such connection exists.

The final issue raised was that of the registration of Geographical Indications (GIs). GI has been described as a sign that is used to ‘identify a product whose quality, reputation or other such characteristics relate to its geographical origin.’⁴ Kenya does not yet have a GI law in place but instead it protects GIs in its national legislation through incorporating it in trademark law. According to the Trade Marks Act, geographical names or other indications of geographical origin may be registered as collective trademarks or service marks.⁵ Certification marks are also used in Kenya to protect geographical indications.⁶ According to the Trade Marks Act, a certification mark is a mark ‘adapted in relation to any goods to distinguish in the course of trade goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy or another characteristic from goods not so certified..’⁷ Collective trademarks differ with certification trademarks in that the former are limited to use by a ‘certain group of enterprises’.⁸ A collective trademark is often owned by an association, public institution or cooperative.⁹

A detailed analysis of the concept of geographical indication including certification and collective marks was dissected in a previous blog that would aid in comprehending the gist of this case. Regarding GI protection, the Applicants claimed that:

• Tinderet tea is a geographical indication of tea originating from the area (Tinderet)

• As a geographical indicator of tea from the region, the entry of the mark in the Register of Trade Marks would deny and also threaten the enjoyment of intellectual property rights in the term Tinderet tea and Tinderet Tea Farm.

The Applicants also included GI qualities of Tinderet tea in their statutory declaration to support the basis for their GI claim. In it, the Applicants relied on section 40 A (5) of the Trade Marks Act that is concerned with registration of geographical names or other indications of geographical origin as collective trademarks. They therefore claimed that the word Tinderet in relation to tea should be protected as a geographical indication. Additionally they claimed that tea from the Tinderet region is distinct since it possesses special qualities attributable to its production that has been influenced by climatic as well as environmental conditions in the area it has been grown. The Applicants also relied on publicly available information from the Kenya Tea Development Agency (KTDA) to describe tea from the Tinderet area. For instance the Agency describes tea from the region as intense and exotically unique.

The proprietors, however, defended their registered mark and alleged that the Applicants had not adduced adequate evidence to illustrate that the words “Tinderet Tea Farm” connote a geographical indication. Further, they alleged that a statute for registration of geographical indications in Kenya does not exist and that the registration of geographical indications as collective marks under the Trade Marks Act was unclear. They also questioned whether statements attributed to KTDA could be used as the sole criteria of determining whether Tinderet is a geographical indication.

In the ruling, the Registrar held that the trademark is distinctive because the proprietor’s trademark has been used in the Kenyan market for approximately thirteen years. The long duration therefore implied that the trademark had acquired sufficient distinctiveness. As to whether the trademark should have been rectified in accordance with section 35 of the Trade Marks Act, it was held that the proprietor had a valid and legal claim to the trademark “Tinderet Tea Farm” in accordance with the provisions of section 20 of the Trade Marks Act.

In determining the final issue concerning geographical indication, the Registrar disagreed with the Applicants for the following reasons:

1. According to the provisions of section 40 A of the Trade Marks Act, only an association may make an application for registration of a collective mark and it should be accompanied by rules governing the trademark use.

2. A trademark comprising the geographical term Tinderet can be registered as a certification mark as per the provisions of section 40 of the Trade Marks Act.

3. The Register of Trademarks already contains trademarks that comprise geographical names that identify various goods and services.

The Applicant was however partially successful in moving the Registrar to direct the Proprietor to record conditions of use of the ‘Tinderet Tea Farm’ trademark. These conditions were: that the mark will be used only on the tea grown in the Tinderet area; that the mark will be used to identify the origin of the Proprietor’s tea; and that the Proprietor will not use the mark in a manner that would cause negative reputation to the Tinderet tea growing and production area.

It was, therefore, held that the trademark “Tinderet Tea Farm” is validly entered in the Register of Trademarks. In summation, the case is useful in contributing towards the understanding of the current Registry practice in registering and protecting geographical indications in Kenya, and the challenges faced in this regard. This is because it exposed the intricacies of geographical indications protection in Kenya and analysed collective and certification trademarks that have been incorporated in the law. However, a single comprehensive law tackling the issue of geographical indications protection in the country is still required so as to provide clarity and address emerging geographical indications issues.

image by Hari gurung77