Many sports betting firms in Kenya must have seen (and celebrated) the widely publicized media return of SportPesa (the media must have itself missed out on the apparently huge advertising revenue from SporPesa), welcoming the return of the giant sport betting company that not only sponsored the KPL and local clubs, but also Everton (remember seeing Wayne Rooney wearing a shirt branded SportsPesa?).
The celebration was short-lived as hot-off its heels came the Betting Control and Licensing Board’s (BCLB) announcement that the firm that MileStone Games Limited, the intended operator of ‘SportPesa’ branded sports betting and gaming platforms, was not permitted to do so on account of the fact that “according to documents in our (BCLB) possession, the trade name ‘SportPesa’ belongs to Pevans EA Limited…”
The BCLB may have overlooked the fact that the realm and legal issue of trade marks and brands is separate and apart from company names. Intellectual Property such as trade marks, may be assigned (sold) or licensed (‘rented’) as between owner and third parties, subject to the conditions the parties agree. Media reports claim that Milestone Games Limited obtained a five year license from Pevans EA Limited to use the trade mark ‘SportPesa’. While we are not aware of other details of the license (curiously, such as the cost of such a lucrative license) we surmise that that the brand name and trade mark ‘SportPesa’ is transmissible and transferrable, under the Trade Marks Act, as between a registered proprietor and an assignee or licensee, subject only to their recordal with the Trade Marks office, the Kenya Industrial Property Institute.
The registration of a brand name or a trade mark gives the owner (registered proprietor) the exclusive right to use the trade mark in Kenya in respect of the goods and or services it is registered for. The Registrar of Trade Marks maintains the Register of Trade Marks and has the authority to record trade mark assignments and licenses pursuant to an application by the registered proprietor and upon payment of the necessary registration/recordal fees.
As such, the BCLB has no right or authority to prevent a trade mark assignment or license between Pevans and MileStone, and it’s legal authority to prevent MileStone from operating a sports betting under a trade mark ‘SportPesa’ may only stem from the Betting Lotteries and Gaming Act (BLGA), and its regulations.. As far as we are aware, the BLGA does not restricts licensed firms from operating under more than one brand name or trade mark, and as such,subject to a negative finding on due diligence by the BCLB, the BCLB is not justified in refusing a licensee to operate solely on the basis that it is operating under a trade mark belonging to a different entity, particularly when the licensee has been given a right to use the trade mark and in circumstances where the registered proprietor is itself not using the trade mark.
A trade mark is subject to cancellation by the Registrar of Trade Marks if it is not used for a period of a continuous period of 5 years, and this may have been one of the reasons (aside from revenue/royalty) motivating Pevans to licence ‘SportPesa’ to MileStone.