The level of evidence to successfully institute trade mark infringement proceedings in Kenya

The Kenyan High Court recently clarified the level of evidence required for trade mark owners to successfully obtain injunctions in trade mark infringement proceedings.

In a decision involving a peanut wrapper trader, the registered owner of the trade mark STEAME MAX PEANUTS, claimed that the respondent had infringed her registered mark rights by selling peanut wrappers bearing the similar trade mark, SUPER MAX PEANUTS on the packaging. The respondent, in defence of the injunction and Anton Pillar proceedings brought against her, alleged that the litigation was frivolous and vexatious, as she never traded under the name SUPER MAX PEANUTS at all, as alleged by the Applicant. The Respondent claimed that she was merely a retailer trading under the name Juskam Stores, that purchased products from different suppliers to sell in her store, including previously, the Applicant’s products (which the Applicant, mischievously it was alleged, failed to mention). The Respondent pointed out that the infringing products in question were packaged by a third party, Gazebo Merchants, that had not even been joined in the proceedings.

Upon hearing the parties, the Court was not persuaded by the trade mark owner’s arguments and evidence, holding that the trade mark owner failed to establish a prima facie case of infringement or passing off against the respondent with a probability of success to justify granting an injunction. In doing so, the court found that the trade mark owner failed to prove any link between the respondent, who did not trade as ‘Super Max Peanuts’, and Gazebo Merchants, the packager and distributor of Super Max Peanuts.

To establish a case for trade mark infringement, the court stated that a trade mark owner must do more than just assert a trade mark right and allege infringement – to succeed with an application for infringement, the applicant should provide evidence demonstrating a connection between the allegedly infringing activity and the respondent. The applicant failed to provide evidence linking the respondent to any act of infringement in respect of the goods branded SUPER MAX PEANUTS, packaged by Gazebo Merchants.

This case highlights the importance of not only applying to register a trade mark in order to properly protect it, but also the requirement for trade mark owners, when claiming infringement, to link the illegal conduct to the alleged infringer.