™ - What is the difference between a trade mark and a trade name? trademark falls under the realm of Intellectual Property. Since colonial times we have had trademark registered from as early as 1901 but the system then was to register your trademark in UK for it to have value in Kenya.
™ Can be anything, combination of names, combination of colours, designs all these can make a trademark. Difference between ™ and ® some people will register a mark and not necessary for the purpose of trademark. Trademarks are normally territorial for the reason that they are registered in each country. If one registers Mwarsie for shoes, someone else can go and register the same trademark in Ethiopia. A trademark like Coca cola is universal to the point of being generic.
Trade names are registered with the registrar of companies to use in the course of trade. One can register a trade name if they have used it for a while as a trademark. Certification marks give certification as to the quality of the work for example the KBS logo shows that the quality is approved by Kenya Bureau of Standards.
Use of Trademark
1. To distinguish the goods of one traded from those of another.
2. It refers to a particular quality more so like designer quality, like Gucci, Channel etc, the trademarks are associated with quality.
3. Trademark protects the investment of the inventor, labour capital and goodwill, this attribute has been questioned that it has no legal basis.
4. Identifying the origin of a product i.e when you see Omo you associate it with Unilever. This issue has become redundant in scholarly terms because of the issue of franchising e.g. Nandos in Kenya makes different tasting chicken from the Nandos in South Africa.
5. To promote the marketing and sale of a product. When one has a trademark.
According to David Bainbridge says that the purpose of a trademark are the distinguishing aspect, protection of goodwill and to protect the consumers against confusion.
Registrability of trademarks:
Sections 20-22 of Trademarks Act are on registerbility.
1. Absolute Grounds – there are some grounds where the registrar has no discretion i.e. Kenya Court of Arms is not registerable not matter what you do it is not allowed to register. There are also names that one cannot register as ™ like University of Nairobi, African Union etc.
2. Relative Grounds: the registrar may accept or refuse the registration. If the ™ is likely to cause confusion, the registrar will refuse to register it, if it is confusingly similar the registrar will refuse to register the mark, where the mark is misleading for example when one says Kilimanjaro Oranges where the origin is from Meru, this is lying and confusing as to the origin of the goods. Where the mark is descriptive the registrar will refuse to register it since it describes what one is trying to sell and may exclude a lot of people from using the mark in future. The case of Wagamama v city centre restaurant – Wagamama was sending some kind of cuisine and then some Indian came up with Rajamama selling cuisine and Wagamama was arguing that this was likely to confuse clients. The court held that there was a likelihood of confusion by association since one is likely to associate Rajamama with Wagamama one may confuse and thing they are one and the same people and Wagamama was given an injunction. This is likelihood of confusion through the doctrine of confusion by association.
3. Marks Capable of Distinguishing one product from another: ExE for Flour or Vaseline for Petroleum Jelly. These ™ can distinguish what one is buying. Distinctive marks are registerable under Part A and Part B for those that are marks capable of distinguishing products
Read Trademarks Act Saudi Arabia v Saudia Kenya Enterprises
Whatever ™ one registers for a certain product they cannot deviate and later register the same ™ for other goods. The use of ™ has to be in good faith. Read
Brooke Bond v Chai, BAT v Cut Tobacco, Hack Babies v Oper Pharmacies
Making a trademark generic
Rights of a ™ owner
Rights to use the ™ if a 3rd party uses the ™ to further his own interests, it amounts to infringement.
If one uses a ™ that is confusingly similar to the ™ of another, refer to Nivea v Nivelin or for example in Kenya we have panadol and in South Africa we have Panado if one registers Panado in Kenya there is a likelihood of confusion.
Parallel Importation – the principle of exhaustion – once you have released your goods to the market, you have no control and it can be used by an infinite number of people at the same time. But the principle can be defined as National meaning once goods are sold within Kenya one has exhausted the first right, so a 3rd party cannot take the goods and sell them in Tanzania. International exhaustion is to the extent that once the goods are in the market, you cannot stop other people from selling the goods, the goods cannot be reproduced but they can be redistributed. Refer to the Silhouette Case silhouette were manufacturers of designer shades. The Defendant was based in Vienna and used to sell discount frames, after a while Silhouette sold some old fashioned frames to a buyer in Bulgaria and the defendant went to Bulgaria, bought the frames and brought them to sell at a discount and Silhouette went to court. the court held that since Bulgaria was out of the EU (regional exhaustion) the importation and subsequent sale by the defendant amounted to infringement of the Silhouette ™.
FRANCHISE & LICENSING WITH REGARD TO ™