Unlike other areas of intellectual property (IP) law, trademark law is a subject that is accessible to everyone. To understand why goods are marked with signs, why two or more businesses cannot use the same sign for the same goods or services, why it is not a good idea for those signs to be very similar to one another, why you should not be able to stop someone from using a sign if you have it but do not use it yourself, and so on – these are topics that quite amenable to general understanding.
On 22nd January 2015, Radio Africa Group (RAG) filed an application to register trademark no. KE/T/2015/85958 “KILIMANI MUMS” (WORDS) before the Registrar of Trade Marks. The application was filed in international classes 35 (Advertising; business management) and 41 (Education; providing of training) of the International Classification of Goods and Services for Purposes of Registration of Marks in respect of various goods and services.
The Registrar duly examined the mark in accordance with the provisions of the Trade Marks Act, Cap 506 of the Laws of Kenya. The mark was approved and published in the Industrial Property Journal. Upon expiry of the sixty day statutory period, the mark was entered in the Register of Trade Marks and a Certificate of Registration was issued to RAG as the Proprietor on 25th June 2015.
Recently, RAG submitted complaints for trademark violation to Instagram, YouTube and Facebook claiming that there were numerous accounts on these social media platforms using RAG’s registered trademark. One such social media account is the popular Kilimani Mums facebook page. By virtue of the standard terms and conditions on these social media sites, once a complaint is received alleging violation of IP rights, the sites immediately remove and/or disable access to content that is the subject of the infringement complaint.
Using the hashtag #SOMEONETELLRADIOAFRICA, the administrator of the Kilimani Mums facebook page has stated: “We will challenge the trademark. It is a wrongful one”. To do this, the facebook page administrator will have to commence expungement proceedings in relation to the trademark in question. In this regard, section 35 of the Trade Marks Act states as follows:
“35. (1) Any person aggrieved by the non-insertion in or omission from the register of an entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the court or, at the option of the applicant and subject to the provisions of section 53, to the Registrar, and the court or the Registrar may make such order for making, expunging or varying the entry as the court or the Registrar may think fit.”
In order to succeed in such expungment proceedings (before the Registrar of Trade Marks), the facebook administrator will have to establish two points:
1. RAG had no valid and legal claim to the mark “KILIMANI MUMS” (WORDS) before they applied to register the mark as provided for under section 20(1) of the Trade Marks Act.
2. The facebook administrator is the aggrieved person in accordance with the provisions of section 35 of the Trade Marks Act.
With regard to the first point, section 20(1) of the Act reads as follows:
“20. (1) A person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous of registering it shall apply in writing to the Registrar in the prescribed manner for registration either in Part A or in Part B of the register.”
Generally speaking, the claim for proprietorship of a trademark should a justifiable one and where such a claim cannot be made by the proprietor of the mark in good fair, then such a mark would be liable for expungement from the Register of Trade Marks. Further, an applicant for registration of a trade mark must have a proprietary right to the mark which the applicant can sufficiently substantiate if called upon to do so. The applicant must also be able to show that the mark under consideration can act as a badge of origin for the respective goods or services to which it relates. In this regard, a cursory search on the World Wide Web for “Kilimani Mums” seems to suggest that the alleged proprietary right of RAG to the word mark in question may not be sufficiently substantiated as required by law.
On the second point, the facebook page administrators as the applicants in the expungement proceedings are required to show that they are the aggrieved persons in accordance with the Act. The “aggrieved persons” are the persons who would be interested in having a mark removed from the Register of Trade Marks including all persons who would be substantially damaged if the mark remained, and all the trade rivals over whom an advantage was gained by a trader who was getting the benefit of a registered trade mark to which he was not entitled. Therefore such aggrieved persons includes any person who may have his/her legal rights limited due to the fact that a mark that ought not to be in the Register of Trade Mark remains in the Register. It is plausible that the Kilimani Mums facebook group administrator may be able to qualify as aggrieved persons under the provisions of section 35 of the Trade Marks Act.