Sweets firm fights Time Warner in cartoon rights row
A workers sort sweets at the Kenafric Industires factory in Baba Dogo in October last year. The firm says it deals with different products from Cartoon Network hence does not breach trademark laws. Photo/FILE
What you need to know:
The sweets manufacturer is responding to claims by Time Warner that Kenafric used wrappings branded Ben 10 — a flagship cartoon character of the US giant —without its approval
The US firm, through its TV unit The Cartoon Network Inc, wants Kenafric stopped from using the character in packaging its products and alleges the association of the chewing gum with its brands can damage the reputation of Ben 10 and of goods branded with the label
Kenafric Industries says New York-listed Time Warner has no control over its cartoon trademarks used in sweet wrappings in Kenya in a legal battle that will test the application of global copyright laws locally.
The sweets manufacturer is responding to claims by Time Warner that Kenafric used wrappings branded Ben 10 — a flagship cartoon character of the US giant —without its approval.
The US firm, through its TV unit The Cartoon Network Inc, wants Kenafric stopped from using the character in packaging its products and alleges the association of the chewing gum with its brands can damage the reputation of Ben 10 and of goods branded with the label, which include toys, video games and clothing valued at Sh275 billion.
But Kenafric says Time Warner cannot use the Madrid Agreement on international registration of trademarks to stop it from wrapping sweets with the cartoon-branded packages.
The Madrid Protocol, which was adopted in 1989, provides that once a trademark is registered in a country which is signatory to the agreement, it becomes protected in all other nations that have adopted the treaty.
Kenafric says Cartoon Network products are not captured under the food segment of the protocol and hence cannot challenge the Kenyan firm given that they deal in different products.
“The plaintiff (Cartoon Network) is not permitted or authorised to trade in goods or services that fall under the classification 30 of the international trademarks classification in Kenya and many other jurisdictions,” says Kirtam Shah, Kenafric Group managing director.
Class 30 spells out protection mostly over food and beverages products, which also include confectionary.
“The plaintiff’s attempt to allege a right under the said classification is illegal, unlawful and contrary to the Kenyan public interest, having specifically been denied such right,” he adds.
Mr Shah says while Kenya was signatory to the Madrid Agreement, the same did not give Time Warner exclusive use of Ben 10 as a stand-alone mark, but only on specified media like TV, magazines, video and software.
Instead, Kenafric says it is the registered owner of the mark “Ben 10 Ki Magic” that has been exclusively using in Kenya for 10 years. Mr Shah says Kenafric’s Ben 10 is different from that of Time Warner.
Cartoon Network, in a court document, claims that both Kenafric and Cartoon Network use the same distribution channels, and this could easily lead to the association of the Kenafric chewing gums with its cartoons.
It added the association could damage its brands, which it says have been developed over a long period through promotion and advertisements.
The Cartoon Network claims that Kenafric has been exploiting the popularity of the US firm to grow its business and make a fortune. Turner Broadcasting, a Time Warner subsidiary, operates TV properties including CNN, TNT, TBS and Cartoon Network.
But, Kenafric dismisses Time Warner’s claim. It argues that the US firm has no local operations that can make consumers links its products with those of Kenafric, which are mostly sold within East Africa.
Mr Shah adds that the line of trade of the two companies is distinct and there are no similarities between their goods that can confuse the customers.
He says Cartoon Network started to advertise in Kenya after it had sent the demand letter. Ben 10 is a popular brand globally and in Kenya, and it features in the Saturday Nation newspaper and local TV channels.
Cartoon Network had said in its court document that it learnt of the alleged infringement in October 2012 and in January this year it sent a letter to Kenafric demanding it to stop distribution of the chewing gums in a package branded similar to its cartoons.
