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Trading in goods must not only be honest but also not be, even unintentionally, unfair. That is the basic principle that guides the interest of all those who may wish to buy or sell goods- Onguto J in Harleys Limited v Sun-Pharma East Africa Limited [2017] eklr

The High Court of Kenya has yet again made a preliminary finding in a trade mark infringement and passing off action, this time in the realm of pharmaceuticals. The parties- Harleys Limited and Sun-Pharma East Africa Ltd are proprietors of the trade marks ‘Letrol’ and ‘Letroz’ respectively both used in the treatment of breast cancer. In a typical concurrent use of trademarks case, the Plaintiff, Harleys Limited alleges that the Defendant’s Letroz is so similar to its ‘Letrol’ as to cause confusion to the average consumer and that the name and general packaging of ‘Letroz’ is aimed to pass off as ‘Letrol’. The Plaintiff sought a temporary injunction restraining the Defendant from selling their drug under the name ‘Letroz’.

The Defendant denied any wrong doing, contending that the name ‘Letroz’ had been used openly and extensively since 2009 even before the mark was registered in 2014. According to the Defendant, there was a lawful concurrent use of both marks, which is allowed under section 15 of the Trade Marks Act and such concurrent use led to the respective marks of ‘Letrol’ and ‘Letroz’ to be associated with the Plaintiff and the Defendant respectively.

Trade mark infringement

In a twist, the Court declined to grant a temporary injunction and instead found that though the marks were visually and phonetically similar, there was need for either expungement of one mark or concurrent use of both marks, a fact that could only be determined at the full trial. I call it a twist because the court indeed opined that the marks were similar and likely to cause confusion- in favor of the Plaintiff’s case.

In my view, comparing wholly the two words ‘Letrol’ and ‘Letroz’ they may be different in their components but when read or spoken together they appear to represent something so similar as may lead eventually to confusion. An average customer may not have the time to analyse the respective words’ specific details. I form the preliminary view that the words are similar, both by their look and sound- Onguto J.

At the same time, the court rejected the Defendant’s argument that it had used the name ‘Letroz’ openly and extensively since 2009 as no evidence had been produced to show that there were any sales of the drug in Kenya prior to the incorporation of the Defendant and the registration of its mark in 2014.

It would appear that the concurrent use of the marks since 2014 led the court to decline to grant the temporary injunction. There was clear inaction by the Plaintiff in seeking to have the Defendant’s ‘Letroz’ mark expunged by the Registrar of Trade marks. This in my view would probably have been the most appropriate action for the Plaintiff as its mark was registered in 2009 well before the registration of the Defendant’s mark in 2014.

Passing Off

The Plaintiff made out its case for passing off by emphasizing the similarity of the marks and the likelihood of confusion to the purchasing public. The court found, and I would agree, that the Plaintiff did not satisfy the elements for a passing off action which are, as pointed out in Spalding v Gamage, ‘misrepresentation made by a trader to prospective customers of goods or services supplied by him which is calculated to injure the business or goodwill of another trader and which causes actual damage to a business or goodwill of the trader whom the action is brought or will probably do so.’

The Plaintiff produced nil evidence of goodwill or reputation; of confusion or deception to the purchasing public, and of damage suffered as a result of such deception.

The findings of the court appear to be damaging to the pharmaceutical market as the two marks are likely to be confused, but rightfully so as a result of the Plaintiff’s inaction in setting out its case despite discovery of the Defendant’s mark in January 2016, a year before the institution of the case. The Plaintiff in this case is an example of the doctrine that equity does not aid the indolent. Indeed the court remarked that ‘it is inequitable for a person whose rights are being infringed to lay by for a considerable time.’ The case will however be heard on a priority basis and a final verdict can be expected before the end of this year. Be on the look-out as I will -:)