In the High Court’s decision in ABSA Kenya Limited versus Barclays Bank here, the Court addressed itself to what amounts to ‘using’ a registered trade mark in Kenya. The decision and the Court’s analysis is important because of hitherto scanty decisions on the topic, despite the clear statutory provision in the law that requires a registered trade mark to be ‘used’. While removal/deregistration/cancellation applications for non-use are not common requests to the Registrar of Trade Marks, they are more likely to be raised in a defence to an action for trade mark infringement, as it was in the above case regarding the use of ‘ABSA’ by the bank formerly known in Kenya s Barclays Bank.
In Kenya, as in many other jurisdictions, the registration of a trade mark gives its owner/proprietor the exclusive right to use that trade mark in respect of the goods or services it is registered. Unlike company or business name registration, registration of a trade mark mandates its owner to use the trade mark, failing which, it can be deregistered for non-use. This is in line with trade mark jurisprudence which is to the effect the essential function of a trade mark is ‘to guarantee the identity of origin of the marked goods or services to the consumer…by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin‘. As such, in order to benefit from the statutory and exclusive rights that a trade mark registration grants its proprietor, it is central that the trade mark is used, as this creates the required nexus with the consumer.
In the ABSA case, the ABSA Kenya Limited had registered a trade mark ‘ABSA’ in respect of class 16, which essentially covers stationery. The effect of registering a trade mark in a particular class is that not only must the trade mark owner use the trade mark in respect of trade in the goods covered in that class, the trade mark owner cannot prevent a third party from using an identical or similar trade mark in respect of goods or services in other classes.
While the Court found that ABSA Kenya Limited’s trade mark was not then valid, it not having been renewed at the time the matter was in Court, the crux of the Court’s judgment as far as ABSA Kenya Limited’s contention that Barclays Bank had infringed upon its trade mark ‘ABSA’. was as follows:
First, that ABSA Kenya Limited’s statutory and exclusive rights to use ‘ABSA’ did not extend beyond use in class 16. As such, Barclays Bank did not infringe the former’s trade mark by registering and or using ‘ABSA’ in respect of financial services, which fall under class 36. By extension, we posit that anyone can register and use ‘ABSA’ in respect of any goods or services other than/except financial services, insurance and real estate services. Say soap, drinks, flour, cleaning services etc
Second, and perhaps more precedent setting, the Court found in favour of Barclays Bank’s contention that ABSA Kenya Limited had registered ‘ABSA’ without bona fide intention to use the trade mark in the first place, and this is a ground for cancellation of a trade mark. In finding that ABSA Kenya Limited’s use of its ‘ABSA’ trade mark was token use, the Court’s observation was that there had been no evidence adduced in Court on how or when the trade mark was used. The Court fell short of saying that it was possible that ABSA Kenya Limited may have engaged in trade mark trafficking.
Apart from non-use, the Registrar of Trade Marks also has the authority to deregister trade marks that are ought not have been registered in the first place (that were inadvertently registered yet, for example, lacked distinctiveness) or which their owners have failed to renew. This ‘COVID-19 year’ saw the first time that the monthly Intellectual Property Journal had two editions in the same month. The ‘Special Edition‘ published mid-June, advertised the removal of unrenewed trade marks. Trade marks are renewable after 10 years, and removal for non-renewal also serves the function of ensuring that the Trade Marks Register is not unnecessarily clogged with trade marks whose owners no longer have interest in the exclusivity that registration affords.