Earlier this week, Amani Women’s Group posted a blog article here after receiving a Cease and Desist Demand Notice from Penny Galore Ltd. In the explicit Demand Notice, Amani is accused of infringing Penny Galore’s rights under both copyright and the law of passing-off with respect to the latter’s handmade necklace branded and marketed widely as the Kura Necklace. According to Penny Galore’s counsel, Coulson Harney, the necklace is “made up of bone quills that are creatively decorated around a ring necklace which is joined by a hook and comes in various colours such as grey, cream and black”.
Penny Galore alleges that Amani has substantially copied and/or reproduced the Kura Necklace Grey and that Amani are selling this infringing work at its shops to individuals and/or independent traders. Therefore Penny demands that Amani immediately stops all dealings with its alleged infringing necklace and that all pieces of the disputed Amani neckace must be destroyed. In addition, the Demand Notice requires that Amani provides a written promise not to infringe on Penny Galore’s rights in the Kura Necklace. Of course, Penny Galore’s counsel has threatened to sue Amani if the latter does not comply with the Demand Notice.
This blogger submits that this is an important lesson on protection of one’s intellectual property rights. From the little information that is publicly available, there is no doubt that Penny Galore has and continues to invest heavily in commercialising its products and its brand, both of which are protected under the intellectual property (IP) system. The sole fact that Penny Galore has engaged the services of (high-end) IP counsel in this matter demonstrates that it is willing to invest in protecting the IP rights subsisting its various products that have been made available to the public.
On the other hand, it is clear that Amani enjoys equal IP protection as Penny Galore with respect to its unique creations. Therefore, Amani can and should rely on the IP system to defend any unfounded claims made against its products by anyone, including Penny Galore.
Based on Penny Galore’s demand notice and Amani’s website alone, it is impossible for any third party, including this blogger, to ascertain what the alleged infringing necklace looks like and whether there is an objective similarity between the above necklace and the Kura Necklace. However, most IP commentators would agree that necklaces, in their material form, are the subject of copyright protection as artistic works defined in section 2(1) of the Copyright Act.
A good illustration of the required standard of proof for copyright infringement in an artistic work may be found in the case of Macmillan Kenya Publishers v Mount Kenya Sundries Ltd Civil Suit No. 2503 of 1995. In this case, Macmillan Kenya Publishers claimed its rights under copyright has been infringed with respect to its maps “Kenya Tourists Map”. Macmillan argued that the “Kenya Travellers’ Map” by Mount Kenya Sundries Limited was similar to the Macmillan’s maps save for some changes made in certain aspects of the maps’ details.
The court ruled in favour of Macmillan and stated as follows:-
As was pointed out in Alternative Media Ltd vs Safaricom Ltd (2005) 2 KLR 253, infringement of copyright arises not because the Defendant’s work resembles the Plaintiff’s, but because the Defendant had copied all or a substantial part of the Plaintiff’s work. In the case before me, the Plaintiff has submitted evidence which I find to be both sufficient and credible, that its maps (PEx 6 and PEx 7), were copied by the Defendant in the production of the Defendant’s map (PEx 8), and I find the Defendant fully liable for the infringement of the Plaintiff’s copyright.
The above-cited Alternative Media case is the leading case in relation to copyright infringement of artistic works. In that case, the court found that Safaricom had infringed Alternative Media’s rights under copyright with respect to artistic works created by the latter. These works of art were used by Safaricom on it’s 250 Shillings Scratch Cards without Alternative Media’s authority.
Regarding the law of passing-off, the central enquiry is whether the public is likely to be confused into believing that Amani’s necklaces are, or are connected with, those of Penny Galore. The underlying rationale behind passing off is to ensure that competitors within the same market do not engage in any acts aimed at interfering with the goodwill between each business and its customers.
Therefore although Penny Galore appears not to have registered its necklaces, the provisions of section 5 of the Trade Marks Act are clear that:-
“No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark, but nothing in this act shall be deemed to affect rights of action against any person for passing off goods.”
In the case of Githunguri Dairy Farmers Cooperative Society Limited v. Uplands Diaries Limited 2009 eKLR, the court found that the features and design of Uplands’ milk packaging were strikingly similar to Githunguri’s Fresha Milk packaging and that the latter’s market survey confirmed that there is confusion in the market.
In arriving at this ruling, the court stated as follows with respect to passing-off:-
The principles to bear in mind when considering a claim under the tort of passing off, is the plaintiff must prove reputation of good will connected with the goods which are known by the buyers by distinctive get up or feature. Secondly, the plaintiff must prove the defendant either intentionally or not, misrepresented to the public leading them to believe that the defendant’s goods are the plaintiffs. The plaintiff has also to prove that they have suffered damages because of the erroneous believe caused by the defendants’ misrepresentation.
The above principles may be useful to Amani as they craft a response to Penny Galore’s Demand Notice.
In light of the above, this blogger looks forward to seeing Amani’s comprehensive evidence showing that the Kura Necklace falls part of the traditional cultural expressions of African and Kenyan communities, as Amani appears to have suggested in its blog article. In the meantime, this blogger is not convinced by Amani’s attempts to portray its dispute with Penny Galore as “bullying” or a case of David versus Goliath.
It is indeed disappointing for Amani to resort to comments such as:
“Kenya is 50 years old and its seems we are still under control of people wanting to make money on the backs of poor wananchi, its not fair … Or may it is just if you have money and success, you think you are entitled to step on whoever you please while you try to make yourself richer”
All businesses, large and small alike, must be alive to possible IP issues in their operations and develop effective IP strategies. Perhaps this is an important lesson not just for Amani but other businesses in the creative and innovation sectors.