Africa IP highlights 2023: Trade marks

Yesterday, it was all about key developments in the copyright field in the Africa IP Highlights 2023 – the result of collaboration between myself and several IP practitioners and researchers across Africa: Clarisse Mideva; Rita Chindah; and Jessie Mgonga.

Today, it’s about the trade marks.

February: In Nigeria, the Business Facilitation (Miscellaneous Provisions) Bill, 2022, was signed into law. The new statute amended certain sections of the Trademark Act 1965, and defines a trade mark to include a mark used in relation to goods or services for the purpose of indicating a connection between the goods or services, and may include the shape of goods, their packaging, and combination of colours; and be used in relation to a certification trademark, registered or deemed to have been registered under the Act.

Africa map with ethnic motif pattern

March: In Nigeria, the slogan “ELLU P” (a drawn-out pronunciation/chant of the Labour Party’s acronym – LP) gained popularity after Mr. Stephen Muoka was seen chanting “ELUU P” during the vote counting and collation for the February presidential election. Stephen Mouka issued a Cease and Desist Notice to the public after an X user created and shared a limited merchandise bearing the slogan. Stephen further stated that he was in the process of registering the word for advertising and media business with the aim of providing marketing, branding, and related services, there was a lot of interest in the possibility of registering such a term. [Should it not be the chant that may be copyright-protected as a musical work?]

In Kenya, the High Court issued a ruling in Osho Chemical Industries Ltd vs Moiben Connections Ltd & Jojemi East Africa Ltd, where the plaintiff had filed a motion seeking various orders, including a restraint on the defendants from passing off their products, infringing on the plaintiff's trademark 'MISTRESS,' and manufacturing, selling, or promoting products bearing the trade name 'IMPRESS' or any similar name. The court concluded that, on a prima facie basis, the names 'IMPRESS' and 'MISTRESS' were not deceptively similar, and the packaging of the two products was distinguishable. The application for injunction was consequently denied.
Also in Kenya, the High Court, in the case of Caterpillar (Quingzhou) Limited v Machinery World Limited, upheld the decision of the Assistant Registrar of Trademarks which had held that the parties’ marks were not confusingly similar, especially considering the discerning nature of the relevant consumers and the well-known status of the Appellant’s mark.

May: In Nigeria, the Nigeria Olympic Committee (NOC) and the International Olympic Committee (IOC) filed an action against a Nigerian company and Olympic Milk Nutricima's producer. The Committees had alleged that the defendant’s use of the name "OLYMPIC" amounted to passing off and claimed the sum of ₦2 billion as general, exemplary, and punitive damages for the unauthorised use, passing off, and infringement of "OLYMPIC" as well as the usage of their goodwill, integrity, and name without the required rights.

Furthermore, Nollywood actress Ann Njemanze sued famous filmmaker Zeb Ejiro and Filmone Entertainment and Film Trybe Media for infringing on her copyright and trademark of “DOMITILLA”. Things, however, took a different turn in when Njemanze's application and registration of Domittila as a trademark were revoked by the Trademark Tribunal. Katpost on the decision here.

 
In South Africa, the Supreme Court of Appeal (SCA) in ICollege (Pty) Ltd v Xpertease Skills Development and Mentoring CC and Another, reversed the decision of the High Court and granted an injunction restraining the first respondent from infringing the applicant’s registered iCOLLEGE trade marks. According to the SCA, the High Court should have considered the marks as wholes, rather than the exact details of each and/or comparing only the pictures in the marks. While there are differences between the logos used by the parties, the fact that there is phonetic and conceptual similarity on at least two levels of comparison: sound and appearance of the word element suffices for a finding of confusion or deception. Katpost on the decision here.

June: In Tanzania, the High Court of Tanzania (Dar es Salaam District Registry), following the case of Abro Industries Inc versus Abri General Traders, dismissed Abro Industries Inc’s appeal and upheld the ruling and drawn order of the Deputy Registrar of the Business Registrations and Licencing Agency (BRELA). The Court held that the Appellant’s trademark and Respondents’ can co-exist in the trademark register despite their similarity and confusion.

In Kenya, the Registrar of trademarks resolved the "Tinderet Case," a dispute over the registration of the trademark "TINDERET TEA FARM." This case not only addressed the compliance of the trademark under the Trademarks Act but also delved into the broader issue of registering Geographical Indications (GIs) in Kenya. Tinderet is an area in Kenya. More on this decision in the Journal of Intellectual Property Law and Practice’s 2023 Roundup series.

August: In Nigeria, the French multinational pharmaceutical and healthcare company Sanofi S.A., filed a petition with the Corporate Affairs Commission (CAC) in 2019, alleging that the registration of Sanofi Integrated Services Limited, Sanofi Nigeria Enterprises Limited, and Sanofi Nigerian Enterprise was unlawful. The court upheld the CAC's earlier decision that the three Nigerian entities should voluntarily change their names because using the well-known registered trademark Sanofi as part of their company names violates the pharmaceutical company's trademark rights. The Federal High Court in Abuja cancelled the registration and unauthorised use of the Sanofi trademark by the three Nigerian companies.

September: In Tanzania, the Registrar of Trade and Service Marks formally announced its intention to abandon Trade or Service Mark applications that do not meet the requirements of the Trade and Service Marks Regulations especially the payment of registration fees. The Registrar’s decision to issue this warning aligns with their commitment to maintaining the integrity of the Trademark registration process and ensuring that only companies and legitimate trademark applications are granted registration.

October: In Tanzania, the High Court of Tanzania (Dar es Salaam District Registry) in Clover SA (Proprietary) Limited versus Tropicana Products, Inc dismissed Clover SA (Proprietary) Limited’s appeal against the ruling and order of the Deputy Registrar of Trade and Service Marks granting Tropicana Products Inc’s application for registration of its Trademark. The decision stems from the argument put forth by the Appellant that Tropicana Inc’s trademark “TROPICANA” (word and Device) is similar, visually and structurally, to the Appellant’s well- known mark “TROPIKA.” The Court took the view that the words “TROPIC/ TROPICAL” are commonly used by companies that manufacture beverages in Tanzania and are commonly used internationally in goods related to mixed soft and hard drinks.

November: In Tanzania, the decision in Godrej Consumer Products Ltd versus Target International (T) Ltd [2023] TZHCComD 365, brought a crucial reminder of the perilous consequences that established companies are likely to face when neglecting or disregarding the registration of trademarks. The Plaintiff was the initial owner of the Trademark “HIT” for mosquito and insect repelling spray in the Tanzanian market but failed to renew its trade mark when it expired. The said trademark was subsequently expunged from the register for non- use. Given this, the Court held that the Plaintiff had no sufficient close relation to the “HIT” trademark and could not successfully institute an infringement suit seeking protection, in the absence of proof of valid registration after expungement of the said trademark.

 

Next up is highlights on reforms in IP policy, legislations and administration in Africa.