James Muchemi Kihara has been in the business of selling and distributing cosmetic products in Kenya for more than three decades.
The businessman was in the early 2000s distributing Dark & Lovely products and in the process, established and created a good reputation and gained knowledge in the beauty, cosmetics and soap industries in Kenya and abroad.
In 2010, a US firm seeking to penetrate the Kenyan market for its beauty products approached Mr Muchemi.
After several correspondence and meetings with representatives of Afam Concept Incorporated, they entered into a deal and through his company, Jampur General Agencies, Mr Muchemi applied to register a trade mark Registrar of Trade Marks.
Afam Concept Incorporated manufactures products such as Hawaiian silky, Vitale, Leisure Curl, Wonder Grow and Ossat Naturals.
Mr Muchemi applied to the Registrar of Trade Marks and TMA No.KE/T/2011/71252 ‘Vitale V’ was registered as a trade mark, to distribute beauty products in Kenya.
The trademark and the associated products were launched with pomp and colour at the Kenyatta International Convention Centre (KICC) on June 14, 2011, in Nairobi.
Thereafter, Mr Muchemi embarked on intense marketing and promotion of the ‘Vitale V products, creating what he termed as “immeasurable goodwill” in the Kenyan market.
He says he spent about Sh20 million promoting the products.
Mr Muchemi started distributing perfumes, gels, deodorants, shampoos, soaps and other beauty products for the US firm as the sole distributor.
All was well until sometime in 2018 when he fell out with the US company. Afam Concept Incorporate sought to terminate the contract and applied to register its trade mark.
The firm said it was “shocked” to discover that someone had registered the name.
It then applied for the trade mark owned by Mr Muchemi to be expunged in May 2021, arguing that the Kenyan company was selling beauty and cosmetics products using its name, something that will confuse consumers.
The firm said ‘Vitale’ has been registered with the European Union Intellectual property office, and African Intellectual Property Organisation, among others, and it has been manufacturing and selling the products worldwide since 1978.
The US firm said it has been in production since 1978 and it would supply the Kenyan partner with Vitale products from time to time and that they entered the deal, to protect its products from counterfeits.
According to Afam Concept, Mr Muchemi is not the owner and creator of the trade mark and Jampur should have applied to be a licensee of the trade mark and not a proprietor if indeed, he wanted to protect his investment.
Mr Muchemi denied the claims and said Afam was attracted to his company to enter the country because of his goodwill in the Kenyan market.
He says he sent an email when the trade mark was registered in 2011 and the company did not object, hence cannot claim that it wasn’t aware of the same.
The businessman says the former partners only raised the matter in 2018, claiming that the trade mark was registered fraudulently.
The Registrar of Trade Marks last month dismissed the application to expunge the trade mark saying the US company was duly updated on the registration by Mr Muchemi.
“Upon consideration of the relevant factors in these expungement proceedings, I have determined that the proprietor (Mr Muchemi) did not fraudulently obtain the trade mark Vitale V,” the assistant registrar said in the ruling.
The Registrar said Mr Muchemi had used the trade mark for eight years while distributing the products when the US firm raised the claims.
“This is quite a lengthy period, in which the proprietor would have the legitimate expectations that, upon investing heavily in promoting the trade mark in the Kenyan market, then the proprietor would be allowed to reap from the investments,” she said.
According to the Registrar, Mr Muchemi had proved that he had a valid legal and valid claim to the trademark ‘Vitale V”, per the provisions of Section 20(1) of the Trademarks Act.
