New York-listed Time Warner has sued a local sweets manufacturer over the use of its cartoon trademarks in a legal battle that will test the application of global copyright laws in Kenya.
The firm through its TV unit, The Cartoon Network Inc, wants Kenafric Industries Limited stopped from wrapping its sweets with packages branded BEN 10 –which is a flagship cartoon channel of the US giant.
Cartoon Network alleges that the association of the chewing gum with its brands can damage the reputation of BEN 10 and goods branded with the label toys, video games and clothing valued at Sh275 billion.
“The defendant’s (Kenafric) use of the name BEN 10 amounts to trade mark infringement of BEN 10 Trademarks,” says Cartoon Networks vice president Louise Sams in documents filed at the Milimani Commercial Court. “The unauthorised reproduction or adaptation or publication or broadcast or sale or distribution or possession or importation of the offending chewing gum constitutes copyright infringement.”
Mr Sams in a court document claims that both Kenafric and Cartoon Network use the same distribution channels, which it says could easily lead to the association of the Kenafric chewing gums with its cartoons.
He added that the association could damage its brands, which the US firm reckons has been developed over long period through promotion and advertisements.
BEN 10 is a popular brand globally and in Kenya, and some of its cartoons feature in the Saturday Nation newspapers and local TV channels.
Cartoon Network claims that Kenafric had been exploiting its popularity to grow its business and make a fortune without the permission of the US firm.
Kenafric Industries Limited is yet to respond to Cartoon Network’s claims. Turner operates TV properties including CNN, TNT, TBS and Cartoon Network.
Cartoon Network is relying on Madrid Agreement on International registration of Trade Mark adopted in April 1891 and the International registration of Trade Marks adopted in Madrid in June 1989.
The Madrid Protocol provides that once a trademark is registered in a country which is signatory to Madrid Protocol, it becomes protected in all other countries which have adopted the treaty. The company, therefore, says having registered its BEN 10 as a trademark in United States, it becomes a protected in Kenya too.
The case is the latest in the series of legal suit filed by known brands fighting over trademark, patent and intellectual rights.
Keroche Breweries last month moved to court alleging that Tona Millers had infringed on its trademark by launching and packaging its product in a similar bottle and name.
Keroche claims Tona Millers manufactures Viara Ice ready to drink, which is almost similar to its alcoholic beverage Viena Ice. Keroche wants the firm stopped from manufacturing, advertising, displaying or selling the product.
Safaricom has faced multiple suits over copyright infringement among them the one filed by micro-lender Faulu Kenya which is seeking the mobile company stopped from trading on M-Shwari platform and a doctor, Dedan Warui, who accuses the mobile operator of infringing on his copyright.
Cartoon Network 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.
“However, the defendant has denied trademark infringement, copyright infringement and the passing off of its products as the products of the plaintiff (Cartoon Network),” says Mr Sams.