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By Cynthia Nzuki

In the words of Benjamin Franklin Beer is proof that God loves us and wants us to be happy. However, in an unhappy turn between Kenyan beer brewers and rivals Keroche Breweries (Keroche) and the East African Breweries Limited (EABL) before the High Court, Keroche sued EABL claiming, amongst others, that EABL wanted to patent and own the 500ml euro brown beer bottle used in the packaging of beer.[1] EABL embossed beer bottles[2] that have the universal shape with its unique EABL initials to prevent rivals from using them. EABL also put up an advertisement informing the public of ownership of bottles and bottle crates that were embossed with their trademark; stating that they would institute legal action against anyone found using these bottles. Keroche argued that the exclusive use of the brown bottles was irrational, unreasonable, an abuse of intellectual property and misuse of dominance. See the news piece here.

An importance of intellectual property rights is that it sets businesses apart from competitors. The case between Keroche and EABL is a classic example and illustration of this. EABL products are well distinguishable from those of Keroche by the use of their trademark.[3] Trademarks are recognisable signs and symbols that identify certain products to be from a specific source. The action of EABL embossing their mark on the bottles is an assertion that the bottles with their marks on them belong to them. Could this be the case?

The beer bottles in contention are universally known as the Euro Bottle(s).[4] These 500 ml beer bottles have a unique shape to them and are brown in colour (example here); and have been used in the packaging of beer for many years, even before the 1980s.[5] Keroche claims that EABL desires to patent the bottles and own them. Under Kenyan law patenting would only be possible under the Industrial Property Act, no. 3 of 2001(The Act). The Act provides protection of rights under patents, certificates of utility models, technovation and registration of industrial designs[6]; also known as design patents.[7] Industrial designs/design patents stem from patentable subject matter.[8] Industrial designs are defined as any composition of lines or colours or any three dimensional form, whether or not associated with lines or colours; provided that such composition or form gives a special appearance to a product of industry or handicraft and can serve as a pattern for a product of industry or handicraft.[9] They are thus concerned only with the outward appearance (eye appeal) of articles as defined by their shape, configuration, pattern or ornament;[10]whereas patents are concerned with inventions that offer a new technical solution to a problem.[11] In addition, for an industrial design to be registrable it should be new.[12] This means that the design must not  have been disclosed to the public, anywhere in the world, by publication in tangible form or, in Kenya, by use or in any other way, prior to the filing date or, where applicable, the priority date of the application for registration.[13] In other words, newness is measured by whether or not that which is to be protected is of public knowledge by the time one is coming to register it for protection; and for it is to pass this threshold, it should not have been disclosed before initiating registration.

In this case, the shape of the beer bottles can be considered to be subject matter worthy of industrial design protection. This is because of the shape the bottle has. However, when it comes to the requirement of newness, the bottle may not be eligible for protection. As seen above, Keroche has claimed that the bottles have been used universally to package beer, if this is proven correct, any application for industrial design protection would not be considered as new. This leads to the question, is EABL seeking to own the bottles or was this a case of simple product labelling?

Trademarks are used for branding. This prevents unfair competition by protecting the use of a symbol, word, logo, slogan, design, domain name, etc. that uniquely distinguishes the goods or services of one company from those of another/rival. In the language of consumers, branding is everything. With EABL embossing the bottles with its trademark, it sends a message to the consumer that those bottles belong to them. This action can be misleading, as EABL cannot own rights in the bottles only the content so packaged. From this stand point, EABL’s action can be said to be that of product labelling.

What about three dimensional (3D) trademarks? Could the bottle shape be eligible for 3D trademark protection? 3D trademarks are trademarks consisting of three dimensional shapes, or any combination thereof with two-dimensional trademarks (such as characters and figures).[14] For example, trademark dolls placed in front of restaurants.[15] For a trademark to receive protection it must be distinctive; meaning it should be recognizably different in nature from something else of a similar type (other beer bottles). The question then becomes whether or not the bottles are distinct. Distinctiveness is dependent on the understanding of the consumers, or at least the persons to whom the sign is addressed.[16] A trademark becomes distinct when it is capable of distinguishing the goods to which it is to be applied from others in the same industry/market. Tying this to this case, EABL cannot trademark the bottles either; this is because, the shape of the bottle is not distinct as it commonly used for the packaging off beer, not only by them but also by Keroche and other brewers of beer.

In conclusion, this case shows the importance of intellectual property rights and even more, the persuasive power of trademarks. The case is still pending a final ruling however, The High Court Judge directed the beer manufacturers, East African Breweries Ltd and Keroche Breweries, to stop further advertisement on the contested beer bottles, until the hearing of the case.[17] EABL and Keroche have always been on each other’s necks as this is not the first time they have had contentions regarding the beer bottles. Back in 2016 EABL sued Keroche for using their bottles.[18] As established, intellectual property ownership of the beer bottles cannot be claimed.

[1]Keroche’s Summit beer bottles are similar to those of EABL’s White Cap and Balozi brands, making it easier for both brewers to interchange the bottles.

[2] https://www.youtube.com/watch?v=YHUwN_mQFNg; at 0.14 seconds.

[3] https://www.eabl.com/ & https://www.kerochebreweries.com/

[4] https://citizentv.co.ke/news/blow-to-keroche-distributors-in-beer-bottle-fight-with-eabl-310967/

[5] Statement of the “Reusable Alliance” on the study “Circulation figures and transport distances in the beverage industry “of the federal Association of the German Food Industry (BVE) and the Handelsverband Deutschland eV (HDE)

[6] Sec 2, Industrial Property Act, no.3 of 2001

[7] All these are different forms of industrial property and are as such related.

[8] With a much lower threshold to obtain protection.

[9] Sec 84, Industrial Property Act, no. 3 of 2001

[10] https://www.kipi.go.ke/index.php/industrial-design

[11] Sec 21, Industrial Property Act, no.3 of 2001

[12]Sec 86, Industrial Property Act, no. 3 of 2001

[13] Sec 86 (2), Industrial Property Act, no. 3 of 2001

[14] https://www.wipo.int/edocs/mdocs/mdocs/en/wipo_tm_jkt_16/wipo_tm_jkt_16_3.pdf

[15] https://www.wipo.int/edocs/mdocs/mdocs/en/wipo_tm_jkt_16/wipo_tm_jkt_16_3.pdf

[16] https://www.wipo.int/edocs/pubdocs/en/wipo_pub_653.pdf

[17] https://www.the-star.co.ke/news/2019-12-31-court-directs-eabl-and-keroche-to-stop-adverts/

[18] https://www.kbc.co.ke/eabl-sues-keroche-over-use-of-brown-bottles-logo/