Personal Finance

How unique Kenyan brands can get global protection

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Models perform during the launch of ‘Share a Coke’ marketing campaign in Nairobi in January. Defensive registration is provided for in most IP laws globally. PHOTO | FILE

Kodak and Coca-Cola are famous words globally. They are used to identify brands in the photo and foods industry respectively.

These words are synonymous with the industry such that people find it hard distinguishing between these words and their respective sectors.
When I was growing up, ‘Big G’ was synonymous with chewing gum.

Can you imagine building such a strong brand that it ends up lending itself to vocabulary? When I checked through an online dictionary, I found that a lot of well-known global brands actually contributed to vocabulary.

It is highly likely that in rural Kenya, the word ‘coke’ is used to describe any soda.

‘Colgate’ is synonymous with toothpaste in my village. When somebody asks you for Colgate you will give them any toothpaste because, according to them, any toothpaste is called Colgate.

Such brands in intellectual property law are called well-known brands.

In Kenya, there are some unique brands that have acquired national recognition such as ‘Jogoo’ maize flour. There is an interesting provision for holders of well-known brands under Kenya’s Trademarks Act (Section 30).

It states that where a mark consisting of invented words has become well known then the owner can register a defensive trademark in Kenya.

A defensive mark can be registered by a global giant in Kenya despite the fact that there is no physical presence in Kenya. It is done to prevent infringement.

There is a high likelihood of people seeking to ride on a global brand and, therefore, this provision allows holders of well-known marks to register protection defensively.

Take the example of McDonald’s. To the best of my knowledge, the restaurant is not in Kenya and I do not know whether or not a defensive trademark has been filed. Assuming that no mark has been done, the owners of the chain can file a defensive mark even if they do not set up here in Kenya.

This is to prevent third parties from riding on the goodwill of their established brand. Such a registration puts the holder in the same position as a person who has registered a trademark normally.

This means, that they can sue anybody who uses their mark without permission or one who uses a mark similar or identical to theirs. Not all brands qualify for defensive registration. The test is that the mark must be famous and unique.

Regional markets

While the benchmark of what is famous is not provided for, the test is that the mark must be identified to the owner’s goods by a large portion of the market.

Kenyan brands like M-Pesa, Jogoo and Unga’s Exe may qualify as well-known brands.

Kenyan businesses whose brands are well known can apply for defensive registration in other jurisdictions, especially if there is intent to expand there.

Defensive registration is found in most intellectual property laws worldwide.

Businesses in Kenya can capitalise on these provisions by establishing a high level of goodwill with their customers so that their products may qualify as a well-known mark.

The emphasis is, therefore, on building your brand and positioning it in the national, regional and global market such that you are able to get automatic protection which enables you to prevent third party infringement.

Mputhia is the Founder C M Advocates. [email protected].