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US cosmetics firm wins ‘Vitale’ trademark battle against Kenyan distributor
A US-based cosmetics products manufacturer has won a trademark dispute after the High Court ruled that its distributor in Kenya fraudulently registered its brand.
A US-based cosmetics products manufacturer has won a trademark dispute after the High Court ruled that its distributor in Kenya fraudulently registered its brand.
The court overturned a 2022 decision by the Assistant Registrar of Trademarks and ordered the immediate cancellation of the “Vitale V” trademark held by James Kihara, trading as Jampur General Agencies.
Stating that distributors cannot claim ownership of brands they are contracted to sell, the court ruled that the mark rightfully belonged to Afam Concept Incorporated, an American company with decades of global use of the “Vitale” brand.
The Assistant Registrar had ruled that Afam Concept Incorporated was not an aggrieved party, that the “Vitale V” trademark was lawfully registered in Mr Kihara’s name, and therefore declined to expunge it from the register.
However, the court allowed an appeal filed by Afam, ruling that the company qualified as an “aggrieved person” under the Trademarks Act and had the legal right to challenge the registration.
The court criticised the registrar for disregarding key contractual terms and relying on extrinsic evidence that contradicted a clear written agreement.
Afam told the court it had manufactured health, beauty and cosmetic products since the late 1970s and sold Vitale-branded goods worldwide.
The company entered the Kenyan market in 2010 by appointing Mr Kihara as an exclusive distributor and representative for the sale and distribution of Vitale olive natural oil in Kenya. The arrangement was governed by a distributorship agreement that explicitly prohibited him from claiming ownership of Afam’s trademarks.
A clause in the agreement stated that the distributor “will not use, authorise, or permit the use of” the Vitale name and “shall not contest the right of the manufacturer to exclusive use” of the trademark. The judge ruled that this clause unequivocally confirmed Afam’s ownership.
Despite this, Afam alleged that Mr Kihara registered “Vitale V” in his own name in 2011 without consent, an act the court deemed dishonest.
The court found his declaration of ownership to be false and misleading. “In the absence of such evidence, it was clear that the respondent’s assertion on the registration form… was false, misleading, and aimed at deceiving the registrar,” it stated.
The court dismissed arguments that Afam had acquiesced to the registration or waived its rights, noting that correspondence between the parties showed no transfer of ownership or consent.
“A review of the emails and correspondence exchanged when the respondent registered the trademark in May 2011 — or at any earlier date — does not reveal that Afam waived its ownership rights nor consented to transferring the mark to Mr Kihara,” the judgment stated.
The court emphasised that written agreements prevail unless fraud or illegality is proven and that courts cannot rewrite contracts between parties.
It also rejected claims that long-term use protected the trademark, ruling that statutory safeguards do not apply to registrations obtained through misrepresentation, particularly when they infringe on the rights of the true owner.
The dispute escalated after Afam terminated the distributorship in 2018 over unpaid supplies and later discovered the trademark registration. Mr Kihara allegedly demanded Sh20 million to recoup sums incurred in promoting the “Vitale V” brand within Kenya. This prompted legal action, and expungement proceedings were initiated at the Registrar of Trademarks.
In its final ruling, the court set aside the registrar’s decision, ordered the trademark’s removal from the register, and awarded costs to Afam.
