1.Through a plaint dated August 10, 2018 the plaintiff sought orders against the defendant for infringement of trademark and passing off. Despite proof of service, the defendant did not file any defence leading the plaintiff to file a request for a judgment dated 10th July 2018. Judgment was entered by this court and a formal proof hearing was held on July 20, 2023.
2.The hearing took place in the presence of counsel for the plaintiff but there was no appearance for the defendant. During the hearing, the plaintiff’s director,David Mwangi Njagi,adopted his witness statement and produced a bundle of documents both dated April 10, 2018 which he relied on as the plaintiff’s evidence. The plaintiff also filed submissions dated August 11, 2023 which the court has also considered.
3.From these, 3 substantive issues arise, which the plaintiff must prove and that is:
4.The registration of trade marks is regulated by the Trade Marks Act cap 506 Laws of Kenya. By dint of section 5 of the said Act, a person cannot institute proceedings to prevent or to recover damages for the infringement of an unregistered trade mark.
5.It is also important to note that under section 7(1) of the Act, a valid registration based on the use of the mark or an intention to use the trade mark in Kenya guarantees a proprietor the exclusive right to the use of the trade mark in relation to goods or provision of services.
6.The plaintiff claims proprietorship over the trademark Sherehe Maize Meal. Evidence led through the plaintiff’s Director, Mr David Mwangi Njagishows that the plaintiff applied for and registered the trademark Sherehe Maize Meal under part A of the Act. I have seen the certificate of registration of trademark No 72xxx in the name of the plaintiff. I do however note that the trademark was for a validity period of ten (10) years effective October 13, 2011.
7.The trademark was therefore scheduled to expire on October 13, 2021. This suit was filed in August 2018 when the trade mark was still registered in the plaintiff’s name.
8.The plaintiff provided an extract of the publication of a similar mark by the defendant, in the Kenya Industrial Property Institute (KIPI) Journal No. 2018/02, dated February 28, 2018. The details of the application by the defendant for the mark are scanty although the plaintiff produced a notice of opposition to registration dated March 6, 2018, filed by the plaintiff against the registration by the defendant. It is not clear whether the plaintiff pursued this issue with the registrar of trade marks to conclusion or the outcome.
9.The plaintiff’s further claim is based on the tort of passing off. The Black’s Law Dictionary 8th Edition defines passing-off as:
10.The plaintiff takes issue with the defendant for passing off its product as that of the plaintiff’s. The elements required to prove an action for passing off were set out in the case of Reckitt & Colman Products Ltd v Boden Inc & others, 1990 RPC 34 where it was held as follows:
11.Regarding the first element of goodwill, it is not in dispute that the plaintiff’s product was first registered in 2011. The defendant sought to register their mark in 2018. This proves that the plaintiff’s mark was registered before the defendant’s mark.
12.The idea of goodwill has been defined in various ways. In Commissioners of Inland Revenue v Muller & Company’s Margaring, 1901 AC as the benefit and advantage of the good name, reputation and connection of a business, as well as the attractive force attached to the name, get-up or logo which brings in custom.
13.In HP Bulmer Ltd v Bollinger SA,  RPC 79 the court described it as a valuable reputation the integrity of which the owner is entitled to protect. The period that a product is deemed to have acquired a reputation and goodwill is depends on a case to case basis.
14.In the absence of any evidence to the contrary by the defendant, and noting that what is required to be proved is that the public identifies a particular distinctive mark with the product that is marketed by the plaintiff, in my view the plaintiff has been able to prove on a balance of probabilities that from 2011 the maizemeal flour packaged under the name Sherehe Maize Mealwas available for sale and thus acquired a reputation capable of being protected as goodwill.
15.Secondly, the court is also required to answer the question as to whether the two products are indistinguishable due to the similarity in trademarks, such that an average customer would not be able to tell the difference between the two. In determining this question, I rely on the holding of the court in LA Group (Pty) Ltd v Lifestyle Equities C.V, 029/18/OAPI/CSR, where the court provided the parameters for consideration. It was held that the assessment of the signs in issue should be done at the visual, audio and conceptual levels.
17.I have considered both marks and I note that there are striking visual similarities between them. The dominant element in both is the prominent word Sherehe against an orange backdrop, and a family at a table. The predominant colours are orange and green. To my mind, the average consumer may, if they even see any difference in the details, only recognize them after a sufficient interval of time.
18.The risk of confusion also must be appreciated considering that both products relate to the same category of products being maizemeal flour. I therefore find no difficulty in holding that there is a misrepresentation by the defendant to the public (whether or not intentional) that is likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff.
19.Finally, having so established, the remedy that is available to the plaintiff would be nominal damages or an enquiry as to damages or account of profits associated with the loss of profits. This would be in addition to injunctive relief so as to restrain the continuance of the infringement and passing off. The plaintiff seeks general damages as compensation for his loss and in the alternative, an account of the profits made by the defendant.
20.The court has the discretion to award either remedy depending on the circumstances at hand. (See Halsbury’s Laws of England Vol. 48  para 442).
22.Guided by this reasoning which I find sound, I hereby enter judgment for the plaintiff against the defendant and grant the following orders:
i.A permanent injunction restraining the defendant whether by himself, his agents and/or servants from manufacturing, producing, reproducing or authorizing the reproduction, selling or otherwise dealing with its maize meal product known as “Sherehe Maize Meal” or any substantial part thereof in any form whatsoever without the license of the plaintiff;ii.An enquiry as to damages or at the plaintiff’s option an account of profits and payment of all sums found due upon taking such enquiry or account.iii.Delivery to the plaintiff within 60 days from the date of this judgment, of all packaging and copies of the Sherehe Maize Mealand design works of the said product for destruction which are in the defendant’s possession.iv.Costs of the suit.