British American Tobacco Kenya Limited v Cut Tobacco Kenya Limited [2007] KECA 128 (KLR)
The bottom line
#Kenya's Court of Appeal ruled that BAT Kenya failed to prove Cut Tobacco's 'Horseman' cigarettes infringed or passed off its 'Sportsman' brand, and dismissed the appeal with costs.
What this practically means
#Executive summary
#Questions the Court framed
#The issues the Court set itself to decide, in its own words.
- 1.Whether the respondent infringed the appellant's registered trade mark 'Sportsman' by use of the 'Horseman' mark and get-up
- 2.Whether the respondent passed off its 'Horseman' cigarettes as those of the appellant
- 3.Whether the learned Judge misdirected himself in evaluating the evidence of alleged consumer confusion
- 4.Whether the Court of Appeal should interfere with the trial judge's findings of fact
Key legal issues
#Whether the 'Horseman' get-up and mark infringed the 'Sportsman' trade mark or passed off the respondent's goods as the appellant's
The appeal was dismissed; the appellant failed to prove infringement or passing off, and the trial judge's dismissal of the suit was affirmed.
The court re-evaluated the evidence as required on a first appeal but reached the same conclusion as the trial judge. The evidence of PW1, PW2 and PW4 was rightly rejected as showing no actual confusion, and PW3 himself conceded he had never been confused between the brands. Red is a conventional industry colour for strong cigarettes, and no property can exist in a colour or in general descriptive words. Whether the get-up deceives is a matter of evidence, and the appellant failed to discharge the burden of proving deceptive resemblance.
Who decides likelihood of deception or confusion
It is the duty of the judge, not the witnesses, to decide whether a mark so nearly resembles a registered mark as to be likely to deceive or cause confusion.
Relying on Payton & Co. v Snelling Lampard and Parker Knoll v Knoll International, the court endorsed the principle that witnesses' opinions on confusion are not determinative. The judge must look at the exhibits, pay attention to the evidence, and bring his own independent mind to bear. The court also noted consumers of cigarettes are not necessarily sophisticated and come from all classes.
The standard for appellate interference with findings of fact
The Court of Appeal will not normally interfere with a trial court's finding of fact unless it is based on no evidence, a misapprehension of the evidence, or a demonstrably wrong principle.
Citing Ephantus Mwangi v Duncan Mwangi Wambugu and the classic Peters v Sunday Post and Selle v Associated Motor Boat line of authority, the court reaffirmed that a first appeal is a rehearing in which the appellate court re-evaluates the evidence while remembering it neither saw nor heard the witnesses. On the facts, no basis for interference was shown, so the trial judge's factual findings stood.
Legal principles established
#- It is for the plaintiff to prove that there is a resemblance between two marks and that such resemblance is deceptive; it is the duty of the judge, not the witnesses, to decide whether the mark complained of is likely to deceive or cause confusion, and the judge must not surrender his own independent judgment to any witness.
- There can be no proprietary rights in a particular colour and no property in general words descriptive of the goods; whether a get-up or word mark is deceptive or confusing is a matter of evidence for the court to determine.
- A first appeal is in the nature of a rehearing: the appellate court must reconsider and re-evaluate the evidence, but will not normally interfere with findings of fact unless they are based on no evidence, a misapprehension of the evidence, or a wrong principle.
- The burden of satisfying the court that there has been an infringement of a trade mark lies on the plaintiff.
Court orders
#- 1.The appeal is dismissed with costs to the respondent
The bench
#One judgment of the whole court — no separate or dissenting opinions.
- On appeal from
- High Court of Kenya, Milimani Commercial Courts, Nairobi
- H.C.C.C. No. 354 of 1999
- Jurisdiction invoked
- First appeal to the Court of Appeal under the Court of Appeal's appellate jurisdiction (the judgment records: 'this being a first appeal it is, indeed, in the nature of a rehearing'); no specific constitutional or statutory provision is quoted in the judgment.
Relief refused
#All relief sought in the plaint (injunctions for trade mark infringement and passing off, delivery up/destruction of infringing goods and documents, disclosure, damages or account of profits)
The appellant failed to prove its case of infringement or passing off; the trial judge's dismissal of the suit was affirmed.
Costs
The appeal was dismissed with costs to the respondent.
Quotable passages
#Verbatim from the judgment, each located to the page it appears on in the official PDF — so these can be cited and checked directly.
We therefore find no merit in this appeal and accordingly we order that the same be and is hereby dismissed with costs to the respondent.
It is also well-established principle of law that it is the duty of the judge to decide whether the trade mark complained of does so nearly resemble the registered trade mark as to be likely to deceive or cause confusion in the minds of the public. From that duty the judge cannot abdicate.
It is of course trite law that the burden of satisfying the court that there has been an infringement of its trade mark is on the plaintiff.
Except in the most flagrant cases, however, actions based on imitation of get-up alone have seldom succeeded.
this being a first appeal it is, indeed, in the nature of a rehearing. For that reason this Court is obliged to reconsider the evidence, assess it and make appropriate conclusions on such evidence, but always remembering that we have neither seen nor heard the witnesses
A Court of Appeal will not normally interfere with a finding of fact by the trial court unless it is based on no evidence or on a misapprehension of the evidence or the Judge is shown demonstrably to have acted on wrong principle in reaching the findings he did.
Issues in the judgment
#The trade mark number is inconsistently stated within the judgment: the plaint pleads Trade Mark 'SPORTSMAN' No. 2012 in Class 45, while the judgment later records it as registered as No. 20112.
Key timeline
#Practical implications
#Frequently asked questions
#Cite this brief
#Cite this brief
Caselaw, "British American Tobacco Kenya Limited v Cut Tobacco Kenya Limited [2007] KECA 128 (KLR)", Case Analysis (2007). Civil Appeal 278 of 2002. Source: https://new.kenyalaw.org/akn/ke/judgment/keca/2007/128/eng@2007-12-20
Suggested citation format for research notes or client memos. Always verify the original judgment before relying on any point.