Basically a trademark it is a mark, sign, or symbol that differentiates the services and products of a particular source or organization from others. And in Kenya, it’s possible for one business to copy another business’s trademark, so long as one condition is followed; that the two businesses offer two completely different services or products under two separate industries. Don’t believe me? Let’s look into the law of it.

According to the Trade Mark Act, it’s an offence for a proprietor to register a similar looking trademark as any other person involved in similar trade of the same goods or services. There’s your loophole right there, the limitation or protection of Trademark is class specific. Class specificity is the classification of goods and services from other goods and services. The food market is in a different category as compared to the medical department; these are in two different classes.

To put it practically, if proprietor A had a saloon business and called it ‘Galore’, proprietor B who also has a salon business, cannot use the name ‘Galore’. However, if proprietor B had a business offering advertisement services, then s/he could call it ‘Galore’. The whole point to this is to ensure the use of a similar symbol or mark of an already registered trademark as your own for any trade or service you conduct, does not cause confusion, uncertainty, or deceit. There should be an intense difference in class between the businesses of the two parties. So much so, that a similarity in trademark would not cause any confusion, uncertainty, or miss-presentation.

Goods and services to be registered under a mark must be classified under the International Classification of Goods and Services, while any figurative elements of the mark must be classified via the International Classification of the Figurative Elements of Marks.

In a legal court case, a plaintiff registered a slogan “Proudly Kenyan” as a trademark, and filed an injunction against the defendants who used the same slogan in the course of their trade. The plaintiffs claimed that they had exclusive rights to the slogan, which the defendant infringed.  The defendants argued that trademark registration was limited to class, and the two parties had businesses in two separate fields. While the plaintiff was offering advertisement services (class 35), the defendant was in the business of selling fuel and related products (class 4).  The court held that the court agreed with the plaintiff’s agreement, stating once again that the intense difference in class between the businesses of the two parties. So much so, that a similarity in trademark would not cause any confusion, uncertainty, or miss-presentation.

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