Jambopay Express Limited v Webtribe Limited t/a Jambopay
The bottom line
#Kenya's Court of Appeal confirmed that a company name too similar to a registered trade mark can get the company itself deregistered.
What this practically means
#Executive summary
#Key legal issues
#Whether the registered trade mark was 'JamboPay' or 'JamboPay plus device'
The Court concluded from the certificate and other record documents that the registered mark was 'JamboPay', rejecting the appellant's contention that it was 'JamboPay with a device'.
Although the photocopied certificate obscured the letters before 'Pay', other record documents (an email and a newspaper cutting) showed the letters preceding 'Pay' spelled 'Jambo' with three dots in a triangular pattern. The spacing on the certificate could only be construed to fit the word 'Jambo'. Nothing supported the appellant's 'JamboPay with a device' contention.
Whether the appellant's name 'JamboPay Express' infringed the respondent's trade mark
The trial judge's finding of infringement was upheld; the similarity was deliberately created to benefit from the respondent's trade mark.
The respondent registered and publicly used 'JamboPay' long before the appellant's incorporation in October 2012. The appellant's director had negotiated with the respondent over the name 'JamboPay Express' for a subsidiary, so could not claim ignorance. The combination 'JamboPay' was unique despite 'Jambo' being common parlance, and the similarity suggested association.
Whether the principles for an injunction were satisfied
A prima facie case was established by proof of infringement, and the trial judge properly exercised her discretion in granting the injunction.
Applying Giella v Cassman Brown and Mrao Ltd, the established confusion and infringement showed breach of rights requiring intervention, sufficient to constitute a prima facie case. The learned judge properly addressed her mind to the law by referring to the locus classicus.
Whether the order for deregistration of the appellant was proper
Deregistration was upheld as the only solution to stop the continued infringement, since the directors could have registered under a non-infringing name.
Given the similarity between the appellant's name and the respondent's trade mark, the judge was under a duty to protect the respondent and balance the parties' rights. The appellant's directors had the option of registering under a different name that did not infringe the trade mark.
Whether the respondent, sued as 'Webtribe Limited t/a Jambopay', was properly entitled to costs
Webtribe Limited remained the entity with capacity to sue, and its award of costs was proper as the successful party.
It was not disputed that Webtribe Limited filed the suit and was awarded costs; trading as 'JamboPay' did not change that fact and was relevant only to the trade mark in dispute. Under Section 27 of the Civil Procedure Act, costs follow the event absent good reasons to the contrary.
Legal principles established
#- On a first appeal, the Court of Appeal must re-appraise the evidence and draw its own conclusions, while making allowances for not having seen or heard the witnesses.
- The burden of proving trade mark infringement lies on the party alleging it, and it is for the judge, not witnesses, to decide whether a mark so nearly resembles a registered mark as to be likely to deceive or cause confusion.
- Costs follow the event under Section 27 of the Civil Procedure Act and will tilt in favour of the successful party unless there are good reasons to order otherwise.
Court orders
#- 1.Appeal dismissed with costs
- On appeal from
- High Court at Nairobi
- NAIROBI H.C.C.C. 159 OF 2014
- Jurisdiction invoked
- First appeal to the Court of Appeal under Rule 29 of the Court of Appeal Rules
Key timeline
#Practical implications
#Frequently asked questions
#Cite this brief
#Cite this brief
Caselaw, "Jambopay Express Limited v Webtribe Limited t/a Jambopay", Case Analysis (2022). Civil Appeal 285 of 2017. Source: https://new.kenyalaw.org/akn/ke/judgment/keca/2022/747/eng@2022-05-27
Suggested citation format for research notes or client memos. Always verify the original judgment before relying on any point.