How to protect your image and business from misrepresentation

Intellectual property is a fairly new subject although its origins date back many years.

Where there is no intellectual property protection other laws can be resorted to for remedial action.

Take the example of the tort of passing off. Tort refers to a wrongful act resulting in injury to another’s person, property, or reputation for which the injured party is entitled to seek compensation.

The tort of passing off protects your business from misrepresentation.

For example, if someone opens a business in your name and rides on the goodwill of your business to make profit then that is passing off and it is actionable in court.

For you to succeed in a passing off claim you must prove that the misrepresentation was made by a trader in the course of business and that it was intended to injure and damage your business.

In some countries passing off has been listed as a restricted trade practice. The tort of passing off can therefore supplement a cause of action where no trademark protection has been granted.

Claiming damages

Your business can therefore recover from a tortfeasor (one who commits a tort) in the absence of a registered trademark.

All you need to do is show that you meet the requirements set out above and file an action in court.

You would be claiming damages and can make a claim for other orders like injunctions stopping the tortfeasor from passing off your business.

Under Kenyan law it is not possible to trademark your name or surname for the obvious reason that names are not distinctive. Even then, the Trademarks Act prohibits the trademarking of names.

Recently there was a dispute between Chelsea and Manchester United over the image rights of former coach Jose Mourinho.

Apparently, Chelsea owns the trademark over Mourinho. It is not clear how the trademark was granted under the United Kingdom and European Union intellectual property law offices. The UK trademark was granted in 2003 and the EU one in 2005.

Since it is not possible to protect your name as a trademark under Kenyan law, how then do you secure your image rights?

This is especially applicable to entertainers and celebrities.

It is possible to use the principle of impersonation where a third party has wrongfully used your name or image to perpetrate a fraud or a crime. If someone pretends to be you, so to speak, and commits a crime or a fraud then you can sue for damages.

Impersonation is a crime and you can have the impersonator prosecuted. You can also recover injunctive remedies other than damages for impersonation.

Another law that may protect your image is the law against forgery. In this case it becomes an image right when somebody forges any aspect of your persona such as a signature. Not only is it a crime, it is also a civil wrong.

Intellectual property law may not always be sufficient to address wrongs, especially if you have not secured intellectual property rights. In such instances you can resort to other laws to the fill the gap.

Ms Mputhia is the founder of C Mputhia Advocates. [email protected]. www.cmputhiadvocates.com