Rothmans of Pall Mall Limited v Independent Tobacco FZE [2019] KECA 363 (KLR)
The bottom line
#Kenya's Court of Appeal allowed BUSINESS ROYALS to stand, ruling that sharing one common word doesn't make trademarks confusingly similar.
What this practically means
#Executive summary
#Key legal issues
#Statutory test for registrability under sections 14 and 15(1) of the Trademarks Act
A mark may not be registered if it is likely to deceive or cause confusion, or if it is identical with or nearly resembles a mark of a different proprietor already on the register in respect of the same goods; the comparison is of the marks as wholes with attention to their dominant features.
The Court construed sections 14 and 15(1), holding that the party alleging deception must prove the offending mark is identical or nearly resembles its mark. The Registrar had himself found the marks not identical or similar visually, aurally or phonetically, yet refused registration - an internally contradictory conclusion. The dominant words are BUSINESS and ROTHMANS respectively; the shared word ROYALS alone does not create resemblance.
Limits of second appeal and burden of proof in trademark infringement
A second appeal is confined to questions of law; the burden lies on the party alleging that the marks are likely to deceive or confuse, and mere registration of a mark for many years does not establish a consumer reputation in Kenya.
Applying section 72(1) of the Civil Procedure Act and Maina v. Mugiria, the Court would not disturb concurrent factual findings absent perversity or misdirection. It adopted the Ugandan authority on burden of proof and the Cut Tobacco principle that smokers are brand loyal and that evidence is needed to show deceptive similarity. The appellant never claimed consumer reputation as 'ROYALS' or exclusive use of the word ROYALS in Kenya.
Get-up and constitutional recognition of intellectual property rights
The get-up of a product is its whole dress as described in sections 9 and 49 of the Trademarks Act; enforcing rights in get-up requires showing consumer association through extensive use, and the Constitution now recognises intellectual property rights.
The Court noted that Articles 11(2)(c), 40(5) and 69 of the Constitution, for the first time, command the State to promote and protect intellectual property rights, though registration remains governed by the Trademarks Act. It described get-up as the labelling, packaging, colours, graphics and design elements, and held that a brand owner must show consumers associate the get-up with it through extensive use.
Legal principles established
#- On a second appeal the Court's consideration is limited to matters of law, and it will not interfere with the decision below unless matters were considered that should not have been, matters were omitted that ought to have been considered, or the decision is perverse
- The burden of proving trademark infringement, i.e. that the offending mark so nearly resembles the registered mark as to be likely to deceive or cause confusion, lies on the party alleging infringement
- There can be no proprietary rights in a particular colour or in general words descriptive of the goods; dominance of the respective marks is decisive of likelihood of confusion
Court orders
#- 1.The appeal is dismissed with costs
- On appeal from
- High Court at Nairobi
- H.C.C.A No. 314 of 2010
- Jurisdiction invoked
- First appeal to the Court of Appeal under the Civil Procedure Act (second appeal limited to matters of law under section 72(1))
Key timeline
#Practical implications
#Frequently asked questions
#Later judgments citing this (1)
#Judgments in the corpus that rely on this one. Where the Court said how it treated the authority, that is shown.
- Thermos Hong Kong Limited v Doshi Ironmongers Limited[2022] KECA 544 (KLR)10 Jun 2022
Cite this brief
#Cite this brief
Caselaw, "Rothmans of Pall Mall Limited v Independent Tobacco FZE [2019] KECA 363 (KLR)", Case Analysis (2019). Civil Appeal No. 31 of 2013. Source: https://new.kenyalaw.org/akn/ke/judgment/keca/2019/363/eng@2019-09-27
Suggested citation format for research notes or client memos. Always verify the original judgment before relying on any point.