In an increasingly competitive Kenyan market, businesses often encounter a difficult intellectual property question: Can two businesses legally use or register the same or substantially similar trademark where they operate in different industries? The answer is not necessarily no.
Kenyan trademark law does not automatically give a proprietor an unrestricted monopoly over a word or name across every conceivable category of goods and services. The critical consideration is whether the competing marks are likely to create confusion as to the commercial origin of the goods or services.
This position is illustrated by recent decisions of the Kenya Industrial Property Institute (KIPI), particularly the TESON and KLEENGUARD rulings.
The legal framework
The starting point is section 15(1) of the Trade Marks Act, Cap. 506, which prohibits registration of a mark that is identical with or nearly resembles a mark belonging to another proprietor and already on the register in respect of the same goods or description of goods. For services, the provision applies to the same services or description of services.
This is important because the statutory test is not simply whether two businesses have identical names. The goods or services for which the marks are used must also be considered.
Section 14 is also relevant because it prohibits registration of matter whose use would be likely to deceive or cause confusion.
Further, section 15(2) recognises honest concurrent use and other special circumstances, allowing the Registrar or court, in appropriate circumstances, to permit identical or nearly resembling marks to coexist subject to conditions and limitations.
The law therefore recognises that trademark protection must be considered within its commercial context.
KIPI’s TESON decision
One of the most useful authorities is T.M.A. No. 127223, “TESON” (Word & Device), in the name of Filtex Marketing Sdn. Bhd.
The applicant sought registration of “TESON” in several classes. The Examiner raised objections because identical “TESON” marks were already registered in Classes 4 and 7.
Despite the similarity of the marks, KIPI did not treat the existence of an identical name as automatically determinative.
Instead, the Registrar examined the nature and composition of the goods, their respective uses and the channels through which they were bought and sold. KIPI relied on the principles in Jellinek’s Application (1946) 63 RPC 59.
The Registrar ultimately allowed the application to proceed in respect of goods that were sufficiently different from those covered by the earlier registrations, while maintaining the objection in respect of goods where the conflict was sufficient.
The significance of TESON is therefore straightforward: An identical trademark does not necessarily create a trademark conflict where the goods or services are sufficiently different and consumers are unlikely to believe that they originate from the same undertaking.
However, the case also demonstrates that different classes alone are not enough. The actual goods and their commercial relationship must be examined.
KLEENGUARD: same name, different products
KIPI adopted a similar approach in T.M.A. No. 130550 “KLEENGUARD”, in the name of Kimberly-Clark Worldwide, Inc.
Kimberly-Clark applied to register KLEENGUARD in Class 9 for disposable protective garments, gloves, eyewear and face masks.
The Examiner objected because KLEEN GUARD was already registered in Class 3 in the name of Alberto-Culver Company.
The marks were therefore highly similar, but the goods were materially different.
KIPI considered the nature, use and trade channels of the respective goods and ultimately revoked the refusal, allowing the application to proceed to publication.
KLEENGUARD is particularly useful where a client argues: “The other business has the same name, but we do completely different things.”
The appropriate legal argument is not merely that the businesses have different class numbers. Rather, it should demonstrate that:
- the goods or services are different;
- their purposes are different;
- their customers are different;
- their trade channels are different;
- their points of sale are different; and
- consumers are unlikely to believe that the two businesses have the same commercial origin.
Different classes are not a complete defence
Businesses should nevertheless exercise caution.
The Nice Classification is not a magic barrier against trademark infringement or opposition. Two businesses can be in different classes and still offer goods or services that are sufficiently related to cause confusion.
Conversely, identical or similar marks can sometimes coexist where the respective goods or services are sufficiently distinct.
The correct question is therefore: Would the relevant consumer, encountering the respective marks in the ordinary course of trade, reasonably believe that the goods or services originate from the same undertaking or businesses that are commercially connected?
This approach is consistent with the reasoning adopted by KIPI in TESON and KLEENGUARD.
What if the trademark has already been advertised?
This is where the opposition procedure becomes important.
Under section 21 of the Trade Marks Act, once a trademark application has been accepted, the Registrar causes it to be advertised. Any person may then oppose the registration within the prescribed period. The opposition must be made in writing and must contain the grounds of opposition.
Under Rule 46 of the Trade Marks Rules, an opposition must be filed within 60 days from the date of advertisement of the application in the Industrial Property Journal or Kenya Gazette.
The practical KIPI procedure can be summarised as follows:
1. Monitor the Industrial Property Journal
Once a potentially conflicting mark is advertised, the proprietor should identify the application number, applicant, mark and classes.
2. Give notice to the applicant
KIPI’s Industrial Property Journal specifically advises that formal opposition should not ordinarily be lodged before reasonable written notice has been given to the applicant, giving the applicant an opportunity to withdraw the application. KIPI may take failure to give such notice into account when considering costs.
3. File Form TM6
The opponent files a Notice of Opposition in Form TM6. KIPI expressly lists TM6 as the official “Notice of Opposition of Application” form.
The opposition must state the grounds upon which registration is opposed. Where the opposition is based on resemblance to an existing registered mark, Rule 47 requires the opponent to identify the registration numbers of the earlier marks and the relevant Journal or Gazette advertisements.
4. Pay the prescribed fee
The current KIPI Industrial Property Journal notices state that the TM6 is filed in duplicate with the prescribed opposition fee. Recent notices specify Kshs. 5,000 for a local opponent and US$250 for a foreign opponent.
5. Applicant files Form TM7
The Registrar serves the opposition on the applicant, who must respond through a Counter-Statement, filed using Form TM7. KIPI lists TM7 as the official “Form of Counter-Statement.” Failure by the applicant to file the counter-statement within the prescribed period can result in the application being deemed abandoned under section 21(4) of the Act.
6. Evidence and hearing
The matter proceeds before the Registrar, with the parties being given an opportunity to present their evidence and submissions where required.
The Registrar then determines whether registration should be allowed and, where appropriate, may impose conditions or limitations. Section 21(5) expressly empowers the Registrar to decide whether registration should be permitted after considering the evidence and hearing the parties where required.
7. Appeal
A party dissatisfied with the Registrar’s decision may appeal to the court under section 21(6) of the Trade Marks Act.
What should an opponent prove?
Where the objection is based on an existing trademark, the opponent should avoid relying solely on the fact that the names are identical. A strong opposition should demonstrate the commercial connection between the competing goods or services.
For example:
| Factor | Questions to consider |
| Similarity of marks | Are they identical or substantially similar visually, phonetically or conceptually? |
| Goods/services | Are they the same or closely related? |
| Customers | Are they purchased by the same consumers? |
| Trade channels | Are they marketed and sold through the same channels? |
| Purpose | Do the goods/services serve similar purposes? |
| Point of sale | Would consumers encounter the marks in the same commercial environment? |
| Confusion | Would consumers believe that the businesses are related? |
| Reputation | Is the earlier mark well known or particularly distinctive? |
This is where TESON and KLEENGUARD become particularly useful: similarity of the marks is only part of the analysis.
Intellectual property protection is ultimately about source
A trademark performs an important intellectual property function because it enables consumers to distinguish the goods or services of one undertaking from those of another.
Consequently, the question in a dispute involving identical names should ultimately be approached from the perspective of the origin of the goods or services and the likelihood of consumer confusion.
If one business uses “ABC” for construction services while another uses “ABC” for clothing, the fact that the word is identical should trigger an examination of the relationship between those businesses, but it should not automatically end the inquiry.
If, however, one business uses “ABC” for construction materials while another uses “ABC” for building materials, the risk of confusion is considerably greater because the businesses operate in overlapping commercial spaces.
Conclusion
Trademark protection is not determined by the similarity of names alone; the goods or services, the relevant consumers, trade channels and likelihood of confusion must also be considered.
KIPI’s decisions in “TESON” and “KLEENGUARD” demonstrate that even identical or highly similar marks may coexist where the respective goods or services are sufficiently different. At the same time, businesses should not assume that operating in different Nice classes automatically provide protection from opposition.
For a proprietor faced with a potentially conflicting trademark, the practical response is to conduct a search, identify the relevant class and goods/services, assess the likelihood of confusion and, if necessary, file a Form TM6 Notice of Opposition within 60 days of advertisement, supported by clearly pleaded statutory and factual grounds.
For businesses seeking to protect their brands, the lesson is equally important: registering a trademark is only one part of brand protection. Understanding the scope of that registration and monitoring subsequent applications is equally important.
Key authorities
- Trade Marks Act, Cap. 506, sections 14, 15, 15A and 21.
- Trade Marks Rules, Rules 46 and 47.
- T.M.A. No. 127223 “TESON” (Word & Device), Filtex Marketing Sdn. Bhd.
- T.M.A. No. 130550 “KLEENGUARD” (Word), Kimberly-Clark Worldwide, Inc.
- Jellinek’s Application (1946) 63 RPC 59, as applied by KIPI in TESON.
- KIPI Trade Marks Manual of Examination Procedures, including the examination principles applied by the Registrar.
KIPI forms: KIPI officially provides TM1 (authorisation of agent), TM2 (application for registration), TM6 (notice of opposition) and TM7 (counter-statement) among its trademark forms.
