A proprietor of a trademark has
the exclusive use of the mark and any person who wishes to use it has to do so
with a license from the protection’
-
Per Mbaluto, J. In Beiersdorf Ag v Emirchem Products Ltd. 2002 KLR 1,7.
Discuss the accuracy
of this statement in the light of the ruling in Lords Healthcare v Salama Pharmaceuticals, Civil Suit 334 of 2007
(Okwengu, LJ).
Facts
Beiersdorf East Africa Ag v
Emirchem Products Ltd: In the
seminal ruling by Judge Mbaluto that was delivered at the Nairobi High Court,
the plaintiff had been manufacturing and selling products such as soaps, toilet
paper, oils for the skin etc. under the registered trademark Nivea Crème worldwide for many years. One of
the plaintiff’s products was Nivea petroleum jelly was sold in a rectangular
jar. On the face of it was written Nivea and immediately below were the words
pure petroleum jelly.
The defendant was manufacturing
and selling a product that was called Nivelin pure petroleum jelly. The
plaintiff’s grievance was that the defendant’s product was so similar to the
plaintiffs registered trademark that it constituted infringement and that the
defendant was also liable for passing off. The plaintiff approached the honourable high
court to seek for an interlocutory injunction and was granted.
Lords Healthcare v Salama
Pharmaceuticals: In the jurisprudential ruling that was delivered
by Judge Okwengu at the Nairobi Milimani High Court, the plaintiff was a
distributor of medicine that bore the registered trademark ‘Budecort-200’
Budesonide Inhaler’. The defendant was also distributing medicine under the
name ‘Budecort-200 inhaler’. The product is manufactured by a company in India
called Cipla Ltd. The manufacturer had an agreement with the plaintiff that the
plaintiff would be the sole distributor of the product in Kenya. The defendant had also registered its
interest with the manufacturer and was a parallel importer. The plaintiff
represented by Senior Counsel Oraro unsuccessfully sought for an interlocutory
injunction.
Differences
between the two decisions that affect the question
The defense strategy- in the Nivea case the defendant alleged that
the marks are not deceptively similar whereas in the Lord healthcare case the
defense claimed that the products and the mark are the same as such no question
as to deceptive similarity arose.
In the Lord Healthcare case
there was an international registered trademark that belonged to the
manufacturer and there was also a similar local registered trademark that
belonged to the plaintiff. There was therefore conflict as to whether the local
registration was valid. There was no conflict of international and national
registration of the trademark in the Nivea case. The international registration
was under the Paris Convention which Kenya is a signatory to.
In the Lord Healthcare case the
manufacturer who supplied both the plaintiff and the defendant was the same
whereas in the Nivea case the plaintiff was the manufacturer and distributor of
its products through its subsidiary.
In the Nivea case the plaintiff apart from
claiming infringement also claimed passing of whereas in the Lord Healthcare
case the plaintiff main weapon was only infringement.
In the Nivea case the plaintiff
had acquired immense goodwill for distributing his products from 1971 to 2002
whereas this was not so in the Lord Healthcare case.
In the Nivea case there was the
likelihood of bad faith by the defendant as he was the formerly employed
production manager. He resigned without giving clear reasons and set up the
defendant company.
In the Lord Healthcare case the
certificate of registration did not provide that the certificate was for use in
legal proceedings.
Section 7(1) of the Kenya
Trademarks Act guides us that the proprietor of a trademark has the exclusive
use to the use of the mark and anyone else who intends to use the mark must
seek permission. Prof Lionel Bentley in his book Intellectual Property Rights[1]asserts that the
presumption is that when a mark is registered it is deemed to have been
registered duly. However this presumption is rebuttable. The facts are that in
the Lord Healthcare case there was an international registration of the same
mark under the Paris Convention under which Kenya is a signatory as such the
Plaintiffs similar mark should not have been registered as there is a conflict
between two registrations as there were to different people, the manufacturer
and the plaintiff, as such the national registration was invalid.
The restatement of section 7(1)
of the Trademarks Act by Judge Mbaluto was good law. However in light of the
decision by Judge Okwengu we find that section 7(1) is inaccurately limited as
it does not take into account particular extraneous circumstances. These
circumstances include;
1.
The fact that international registration of the
mark is not considered.
2.
The fact that a certificate for registration
must indicate if it for use in legal proceedings.
3.
The fact that a parallel importer does not gain
exclusive rights to use a mark in relation to parallel importers.
4.
The fact that can a parallel distributor
register a mark that is similar to products that are sold by other distributor
and thereby gain exclusive rights to the mark?
5.
The fact that a distributor can only register a
mark that is for a distinct product to gain exclusive use and not in relation
to a product that is lawfully supplied to other distributors by the
manufacturer.
6.
The fact that a registered trademark owner who
is a manufacturer must himself first grant an exclusive license to a
distributor in order for the distributor to have exclusive rights to sue and
therefore gain locus.section7(1) must consider the intricate detail of locus
standi in light of the new circumstances that were evident in the Lord
Healthcare case
7.
The fact that an exclusive right to distribution
does not encompass the exclusive right to use a mark.
The
above outlined circumstances must be deeply considered by a court of law in
order to determine exclusive use of a mark. There cannot be an iota of doubt as
to the exclusive use of a mark. As such
the ruling by Judge Mbaluto was to some extent inaccurate as it did not fathom
these circumstances.
Bibliography
1. The
Kenya Trademarks Act
2. Beiersdorf Ag v Emirchem Products Ltd. 2002
KLR 1,7
3. Lords Healthcare v Salama Pharmaceuticals, Civil
Suit 334 of 2007
4. L.
Bently, Intellectual Property Law, 4th edn, Oxford University Press
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