Time for Africa to review outdated trademark laws

Trademark judgements are few in sub-Saharan Africa with the exception of  South Africa.

It’s rare to get two within the space of a few days.

Neither judgement is particularly impressive, but there are lessons to be learnt from each one. 

First in Kenya, where the High Court recently delivered a judgment in a trademark opposition.

The issue:  whether L’Oreal, owner of registrations for Dark & Lovely for personal care products, could successfully oppose an application by a company called Interconsumer to register Nice & Lovely for the same goods.

The High Court upheld the registrar’s finding that the marks Nice & Lovely and Dark & Lovely were not confusingly similar.

The court was clearly influenced by the fact that the registrations for Dark & Lovely were subject to disclaimers of the individual words ‘dark’ and ‘lovely’. 

The court was, however, unmoved by the fact that the United States Patent and Trademark Office (USPTO) had apparently upheld a similar opposition.

Kenyan trade mark law is, of course, based on British law, and it’s to that country that the court went for guidance, approving the test for similarity in the venerable case of Pianoist Trade Mark 1906 23 RPC: ‘‘You must take the two words.

You must judge them both by their look and their sound. You must consider the goods to which they are applied. You must consider the nature and kind of customer who would be likely to buy those goods.

You must consider all the surrounding circumstances, and must further look at what is likely to happen if each of the trade marks is used in a normal way as a trade mark for the goods of the respective owners of the mark.’’

The court also referred to a leading South African decision on confusingly similarity, Plascon Evans Paints (Pty) Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623, where the court  found that the marks Micatex and Mikacote were similar.

Although the Kenyan court held that the South African case was distinguishable, this  case is frequently quoted in the context of similarity. The court there said this:

‘‘The comparison must be made with reference to the sense, sound and appearance of the marks. The marks must be viewed as they would be encountered in the marketplace and against the background of relevant surrounding circumstances.

The marks must not only be considered side-by-side but also separately. It must be borne in mind that the ordinary purchaser may encounter goods, bearing the defendant’s mark, with an imperfect recollection of the registered mark and due allowance must be made for this.