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Case Brief · caselaw.co.ke
MagistratePartially AllowedOriginally HCC 114 of 2022 (High Court), transferred to the Chief Magistrates' Court at Milimani· [2024] KEMC 1 (KLR)

Raburu v Airtel Network Kenya Limited (Civil Suit 198 of 2023) [2024] KEMC 1 (KLR)

Chief Magistrates' Court at Milimani, Nairobi
11 March 2024
3,263 words in judgment
View original judgmentRead on Kenya Law Watch case
AI-assisted case brief
·~13 min to read original · ~4 min brief

The bottom line

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A Kenyan court ordered Airtel to stop using 'Bazu' in its marketing and pay media personality Willis Raburu Kshs. 6.5 million for trademark infringement.

What this practically means

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Executive summary

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The Plaintiff, a media personality with Royal Media Services, sued Airtel Networks Kenya Limited for infringing his registered trademark 'BAZU' (No. 116744, registered 13th April 2021 in classes 25, 35 and 38) by using the term 'Bazu' in promoting its internet bundle products. He sought permanent injunctions, special damages of Kshs. 5 million for loss of a potential licence fee, an account of the Defendant's profits, general damages, interest and costs. Originally filed in the High Court (HCC 114 of 2022), the suit was on 6th July 2023 transferred to the Chief Magistrates' Court at Milimani for hearing and determination. The court framed three agreed issues: lawfulness of the registration and use of the mark; liability for infringement; and entitlement to relief. Applying sections 2 and 7 of the Trade Marks Act and authorities including Pharmaceutical Manufacturing Co v Novelty Manufacturing and Cut Tobacco Kenya Ltd v British American Tobacco, the court held that registration conferred exclusive rights and that the burden of proving deceptive resemblance lay on the Plaintiff. Finding that the Defendant began using the mark in December 2022, after registration, in a manner likely to lead the public to believe an endorsement agreement existed, the court held the Defendant liable for infringement and passing off. Applying the Gerber v Lectra principles, general damages were assessed at Kshs. 1.5 million; the claim for an account of profits was dismissed for want of proof. The suit partially succeeded with permanent injunctions, special damages of Kshs. 5 million, general damages of Kshs. 1.5 million, interest at court rates, and costs to the Plaintiff. Judgment delivered 11th March 2024 by Senior Resident Magistrate Rawlings Liluma.

Key legal issues

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01

Whether the Plaintiff's registration of the trademark 'BAZU' in classes 25, 35 and 38 was lawful and conferred exclusive rights

Holding

Yes - as registered proprietor the Plaintiff is entitled to the exclusive use of the mark under section 7 of the Trade Marks Act

Reasoning

Section 7(1) of the Trade Marks Act provides that registration of a person as proprietor of a trademark, if valid, gives that person the exclusive right to use the trademark in relation to the registered goods and services. It was common ground that the Plaintiff was the registered proprietor of 'BAZU' under registration no. 116744 in classes 25, 35 and 38. Reliance was placed on Pharmaceutical Manufacturing Co v Novelty Manufacturing and Solpia Kenya Ltd v Style Industries Ltd. The court held the Plaintiff entitled to exclusive use of the mark.

p. 5
02

Whether the Defendant infringed the Plaintiff's trademark and passed off its 'Bazu Bundles' product as connected to the Plaintiff

Holding

Yes - the Defendant's use of 'Bazu' in its promotional internet bundles amounted to infringement and passing off

Reasoning

The Plaintiff proved registration on 13th April 2021, before the Defendant began using the mark around 16th December 2022. The court applied the Reckitt and Colman ingredients of passing off (goodwill, misrepresentation, damage) and found the Defendant's use of 'Bazu' in promoting internet bundles was likely to lead the public to believe an endorsement agreement existed between the parties, causing confusion among consumers.

p. 6
03

Whether the Plaintiff was entitled to damages, including the account of profits claimed under prayer (d)

Holding

General damages assessed at Kshs. 1.5 million and special damages of Kshs. 5 million awarded; the claim for an account of the Defendant's profits dismissed as unproved

Reasoning

Applying the Gerber v Lectra principles on assessment of damages in tort, the court found it fair to assess general damages at Kshs. 1.5 million. However, under prayer (d) the Plaintiff neither specified the amount claimed nor produced audited accounts or called an accountant, so the profits claim failed on a balance of probability. Interest was awarded on the damages at court rates from the date of judgment.

p. 7

Legal principles established

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  • Registration of a trademark confers the right of exclusive use of the mark, and infringement of a trademark is a tort of strict liability in which intention and motive are irrelevant
  • The burden of proving infringement - resemblance between the marks and that the resemblance is deceptive - lies on the plaintiff, and the judge cannot abdicate the duty to decide whether the mark so nearly resembles the registered mark as to be likely to deceive or cause confusion

Court orders

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  1. 1.A permanent injunction restraining the Defendant, its directors, officers, employees, servants, agents or any authorised person from infringing on the Plaintiff's registered Trademark No. 116744
  2. 2.A permanent injunction restraining the Defendant from publishing any material in the print and broadcast media in respect of the Plaintiff's Registered Trademark No. 116744 in respect of the mark 'BAZU' and/or any confusing or deceptive mark directly or substantially similar to the Plaintiff's
  3. 3.Special damages of Kshs. 5,000,000 for loss of potential licence fee
  4. 4.General damages of Kshs. 1,500,000
  5. 5.Interest on the special and general damages at court rates from the date of judgment until payment in full
  6. 6.Costs of the suit awarded to the Plaintiff

Authorities

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Legislation

  • Trade Marks ActSection 2 (definitions of trade mark, mark, distinguishing guise)
  • Trade Marks ActSection 7(1) (rights given by registration and infringement thereof)
  • Companies Act Chapter 486 of the Laws of Kenya

Cases cited (8)

  • Pharmaceutical Manufacturing Company vs Novelty Manufacturing Ltd
    HCCC No. 746 of 1998
  • Solpia Kenya Limited v Style Industries Limited & another
    ML HCCC No 138 of 2014 [2015] eKLR
  • Wilson Muriithi Kariuki T/A Wiskam Agencies V Surgipharm Limited
  • Cut Tobacco Kenya Ltd v British American Tobacco (K) Ltd
    NRB CA Civil Appeal No 126 of 2000 [2001] eKLR
  • Aktiebolaget Jonkoping–Vulcan Industricksfabriksatebolag v East African Match Company
    [1964] EA 62, 67
  • Nairobi Map Services Limited v Airtel Networking Kenya Limited & 2 others
    NRB CA Civil Appeal No 125 of 2016 [2019] eKLR
  • Reckitt and Colman Products Ltd vs Borden Inc and others
    [1990] 1 All ER 873
  • Gerber –vs- Lectra
    [1995] R.P.C 385
Jurisdiction invoked
Suit transferred from the High Court to the Subordinate Court following a direction that the dispute fell within the jurisdiction of the Subordinate Court

Key timeline

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Practical implications

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Frequently asked questions

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Cite this brief

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Cite this brief

Caselaw, "Raburu v Airtel Network Kenya Limited (Civil Suit 198 of 2023) [2024] KEMC 1 (KLR)", Case Analysis (2024). Originally HCC 114 of 2022 (High Court), transferred to the Chief Magistrates' Court at Milimani. Source: https://new.kenyalaw.org/akn/ke/judgment/kemc/2024/1/eng@2024-03-11

Suggested citation format for research notes or client memos. Always verify the original judgment before relying on any point.