A decade-long legal battle over Kenya’s iconic street clocks has concluded with a High Court ruling favouring City Clock (Kenya) Ltd and restricting a competitor’s branding.
The court ruled that Country Clock Kenya Limited, a firm incorporated by a former City Clock (Kenya) Ltd employee, infringed on City Clock’s registered trademarks and engaged in passing off its services. City Clock Ltd is owned by Nairobi tycoon Tillman Proske.
The court found the rival’s name and appearance “confusingly similar” and ordered Country Clock Kenya Ltd to cease using its current branding, redesign its units, and report compliance within 90 days.
City Clock filed the lawsuit in 2016, asserting that it had leased advertising space on four-sided clock towers since 1984. The company argued that its units had become synonymous with its business and goodwill over three decades.
"Not a monopoly"
Court papers show that the company was involved in the business of renting advertising space on City Clock Advertising Units and outdoor advertising in Kenya since 1984, while providing the public with the correct time of the day.
The company’s managing director, Tillman Proske, acknowledged in court that City Clock was no longer the only company advertising using the four-sided clock in Kenya. He confirmed that he was not a monopoly right holder.
However, in November 2014, a similar clock appeared near Thika Road Mall, linked to Boniface Kitivo, a former employee who had co-founded the competing firm two years earlier, in 2012.
City Clock investigated and confirmed Mr Kitivo’s involvement in installing the rival clock. The company initiated disciplinary proceedings against him, citing reasonable suspicion that he had stolen molds and mechanisms.
However, Mr Kitivo resigned, claiming undue pressure from management. In response, Country Clock Kenya Ltd denied infringing on City Clock’s brand or engaging in deceptive practices, arguing that “Country Clock” was visually, phonetically, and conceptually distinct.
The defendants maintained that the word “clock” is generic and could not be monopolised, adding that prefixes like “city” or “country” did not confer exclusive rights.
They also told the court their clocks used a different design, including dot matrix lettering and distinct hands, and insisted any similarities were functional features common in outdoor advertising.
The pair rejected claims that Mr Kitivo stole moulds or misled clients, saying the rival business was lawfully set up and had traded openly without intent to deceive.
They further highlighted design differences, including dot-matrix lettering and distinct clock hands, insisting any similarities were standard in outdoor advertising.
The court, however, applied Section 7 of the Trade Marks Act, which protects trademark owners from marks likely to deceive or cause confusion.
It noted that both companies operated in the same advertising market, increasing the risk of consumer confusion.
While acknowledging the difference between “City” and “Country,” the court ruled that the dominant word “Clock” and the overall presentation created substantial resemblance.
“The manner in which they are portrayed, designed, mounted, and presented makes the marks closely resemble,” the judge stated, adding that fonts, size, style, and placement were so similar that customers “would not be able to tell the difference.”
The court dismissed arguments that the terms were merely descriptive, clarifying that its ruling did not grant City Clock exclusive rights over the word “clock.”
Nevertheless, it held that the overall branding crossed into infringement and passing off. City Clock bolstered its case with emails and a purchase order demonstrating customer confusion—sufficient evidence under passing-off laws, which do not require proof of actual deception, only likelihood.
The court issued declarations of trademark infringement and misrepresentation, permanent injunctions against Country Clock’s current branding, and a 90-day compliance period for rebranding.
City Clock’s claims for quantified damages and an account of profits were dismissed due to insufficient evidence of precise financial losses.
