Disney’s 2019 remake of the 1994 The Lion King, the musical animation, is set for theatre release on July 19, 2019. For those who have listened to one of the animation’s soundtracks featuring Beyonce and titled “Spirit”, the song starts with Uishi kwa muda mrefu mfalme…. This will be the second Swahili phrase in the animation that has for over 20 years been largely responsible for the world knowing the catchy phrase hakuna matata!
Disney Enterprises Inc applied for the registration of Hakuna Matata as a trade mark on August 8, 1994, and registration was granted on March 25, 2003. From this date, Disney acquired exclusive rights to use Hakuna Matata in the US on T-shirts, and this remains the case today.
So, Kenyan’s lamenting about the appropriation of hakuna matata by Disney is water under the bridge! Either way, the sentiment that Disney should not be permitted to ‘own a Swahili phrase’ stems from a lack of understanding of the extent and nature of the rights a trade mark registration gives an owner.
In fact, in the United States, the US Patent and Trademarks Office has eight registered trade marks comprising the word ‘hakuna’: Hakuna Matata is registered and owned by Disney for use on T-shirts, by an American beer manufacturing company and by an American health/food supplements company; Hakunamatata; Hakuna Pets; Hakuna Banana; Hakuna Matata Weddings and Events and a cheeky Hakuna Masquata.
In Kenya, as is the case in many other countries, a trade mark is a mark or sign which users of products have or may come to associate with those products, distinguishing them from other similar or even identical ones. In day-to-day life, we make purchasing decisions based on our affinity or connection with certain trade marks. For instance, we may make a choice to buy milk branded Brookside® instead of the one branded Ilara® based on our perception (real or imagined) of characteristics or quality of the former, never mind that they are manufactured by the same company. The fact that consumers come to associate a brand or trade mark or whatever it may be — a jingle, a slogan, a logo, an image, a word — with a product which then influences their consuming decision, is intellectual property!
Trade mark registration gives the registered owner the exclusive right to use that trade mark in respect of particular goods or services, and these rights extend only to the country of registration. So Disney would not have this exclusive right to use ‘hakuna matata’ on T-shirts in Kenya, unless and until it registered this trade mark in Kenya.
For consumers of a particular product to associate a brand or trade mark with a particular person or company, that trade mark must not be generic for those products.
For example, while apple and mango are fruits and would invariably be generic for food products or juices made from them and therefore not eligible to be trademarked for these uses, these same words are non-generic for electronics and clothes respectively and therefore can be registered as trade marks and owned by a person for these latter uses.
Coming back to the 1994 The Lion King which popularised the phrase ‘hakuna matata’, arguably most of the people around the world who heard this phrase repeated over and over again by Simba did not know the meaning of the words. And perhaps even after understanding its meaning (…it’s problem-free philosophy…hakuna matata!) still associated it with the animation and no more. And it is this value that Disney created over ‘hakuna matata’ that makes a Disney Hakuna Matata T-shirt cost $24.99 in the US.
Of course in Kiswahili-speaking countries, ‘hakuna matata’ is an ordinary Swahili phrase. Some Kenyans may even associate ‘hakuna matata’ with Them Mushrooms band! In any case, this general consumer connection and association would be missing in Kenya, hence Disney would not likely be granted a trade mark over ‘hakuna matata’ in Kenya, and could not therefore stop any person from using the phrase on T-shirts manufactured, marketed or sold in Kenya. But the name Samurai may be registrable in Kenya for use on clothes, even if not likely similarly trademarkeable in Japan.
Trade mark registration in Kenya is granted under the Trade Marks Act, and is for a renewable period of 10 years. The trade marks registry is administered by the Kenya Industrial Property Institute. Trade mark registration at KIPI involves a ‘similarity search’ process, examination of the application and mark, then approval or refusal (can be refused at this stage based on ‘relative’ or ‘absolute’ grounds).
After an approval, the application is advertised in the IP Journal, and failing opposition within 60 days of advertisement, the mark is registered as a trade mark® and a certificate of trade mark registration issued to the applicant as owner.