Understanding Trademark Infringement in Kenya

In today's competitive marketplace, a brand often represents a business's most valuable asset. At its core lies the trademark, a legal tool designed to distinguish goods or services from those of competitors. However, when unauthorized parties exploit similar or identical marks, it can lead to consumer confusion, diluted brand value, and financial losses. Trademark infringement occurs when a registered mark is used without the proprietor's consent in the course of trade, particularly if it involves identical or related goods or services. This article delves into the intricacies of trademark infringement under Kenyan law, drawing on statutory provisions, judicial precedents, and practical insights to provide a comprehensive understanding.

Trademark infringement is fundamentally a violation of the exclusive rights granted to the registered proprietor. Registration confers upon the proprietor the exclusive right to use the mark in connection with specified goods or services. Infringement is a tort of strict liability, meaning the infringer's intent is irrelevant. The focus remains on unauthorized use that could mislead or confuse consumers.

Infringement arises from the use of a mark that is identical or confusingly similar to a registered one, creating a likelihood of confusion. This unauthorized exploitation can manifest in various forms, including counterfeit products, imitation branding, or even company names that mimic established trademarks. Kenyan law prioritizes preventing consumer deception while safeguarding the proprietor's commercial interests.

Legal Framework Governing Trademarks in Kenya

The primary legislation is the Trademarks Act, Cap 506, administered by the Kenya Industrial Property Institute (KIPI). This Act aligns with international standards, including the Paris Convention for the Protection of Industrial Property, to which Kenya is a signatory. Registration provides statutory protection, but common law remedies like passing off are also available for unregistered marks.

Recent developments emphasize the need for local recognition in establishing well-known marks, beyond mere global reputation. Additionally, the Anti-Counterfeit Authority (ACA) plays a crucial role in combating infringements involving counterfeits, with awareness campaigns ongoing to address rising incidents. Businesses must register trademarks to enjoy full protection, as ownership is proven via a valid certificate of registration. Challenges in enforcement include fragmented statutes and insufficient criminal penalties, highlighting the need for unified databases for trademarks and business names to prevent overlaps. Online violations are increasingly prevalent, as noted in reports on emerging markets like Kenya, where digital piracy and domain disputes pose significant threats.

The Legal Test for Trademark Infringement

Kenyan courts apply a four-pronged test to determine infringement, as illustrated in various High Court decisions. These elements ensure that only valid claims proceed, balancing protection with fair competition.

1. The Plaintiff Must Be the Registered Proprietor

A claim can only be initiated by the registered owner, as registration grants exclusive rights. Trademark protection under Kenyan law is premised on valid registration, requiring submission of a certificate as proof.

2. The Infringing Trademark Must Be Identical or Similar to the Registered Trademark

The core issue is the likelihood of confusion, assessed globally through visual, aural, and conceptual similarities. Courts evaluate the overall impression from an average consumer's perspective, focusing on dominant elements rather than minor differences. Similarities in packaging, bottle shape, label design, and color scheme can establish infringement if they mislead consumers.

3. Use of the Mark Must Be Without Authorization

Infringement requires unauthorized use, irrespective of the infringer's intent. The statutory right applies regardless of awareness. Liability arises from any third-party use without express permission. Unauthorized use by non-licensees can also lead to passing-off claims.

4. The Use Is Likely to Cause Injury or Prejudice

Claimants must show potential harm, such as lost sales, reputational damage, or goodwill erosion. No actual financial loss is required; a likelihood of injury suffices. Similarities in packaging that mislead consumers can cause commercial prejudice, and ongoing infringement may lead to irreparable harm.

Key Judicial Decisions

Kenyan jurisprudence evolves through case law, providing practical applications of the Trademarks Act. Recent 2025 rulings reflect contemporary challenges, including digital and agent-related disputes.

In Ezeetile Kenya Ltd v Dg Services Limited (Civil Suit E034 of 2023) [2025] KEHC 12098 (KLR), the court found infringement where the defendant used a similar mark and packaging for tile adhesive, leading to consumer deception. The plaintiff, as registered proprietor of "TILEFIX," received general damages of Kshs. 3,000,000 and a permanent injunction, despite no defense from the defendant.

In Jovet (Kenya) Limited v Bavaria NV (Petition E039 of 2024) [2025] KESC 27 (KLR), the Supreme Court addressed goodwill as potential property under the Constitution but dismissed the appeal due to lack of direct contract and unsubstantiated claims of unfair termination. While related to distribution rights, it clarified that passing off, similar to infringement, requires evidence of misrepresentation.

In the M-KOPA case, the High Court ruled against a former agent using a similar name and logo, finding it confusingly similar and infringing. The decision highlighted the risks of brand dilution in informal markets and the need for robust enforcement.

In Paksons Enterprises Limited v Kipkoech t/a Paksons Agroveterinary Solutions [2024] KEHC 15435 (KLR), the court dismissed the infringement claim due to prior business name registration by the defendant and lack of passing-off evidence. The ruling called for a unified database between KIPI and the Companies Registry to prevent such conflicts.

In a WIPO domain dispute (Case No. D2025-0030), the panel ordered the transfer of <betika-kenya.com> to the complainant, finding it confusingly similar to the "BETIKA!.COM" trademark and used in bad faith to mimic the site and divert users.

These decisions illustrate courts' focus on consumer protection, evidentiary thresholds for injunctions, and the growing intersection with digital and contractual issues.

Remedies for Trademark Infringement

Upon establishing infringement, proprietors can seek various remedies under the Trademarks Act and common law:

• Injunctions: Courts grant interim or permanent orders to halt unauthorized use.
• Damages or Account of Profits: Compensation for losses, including general damages without specific proof.
• Seizure and Destruction: Orders for infringing goods.
• Cease and Desist Letters: Initial steps to demand cessation.
• Border Measures: Coordination with customs to intercept counterfeits.

Litigation support includes regional enforcement across East Africa.

Prevention and Enforcement Strategies

To safeguard brands, businesses should:

1. Register trademarks promptly with KIPI.
2. Monitor the market for potential infringements using watch services.
3. Develop enforcement strategies, including contracts with agents to prevent misuse.
4. Educate staff on spotting infringements, such as visual similarities or confusing domain names.

The ACA's campaigns aim to reduce counterfeits, but proprietors must remain vigilant. In the digital era, addressing online violations through domain disputes and monitoring is crucial.

Conclusion

Trademark protection in Kenya is rooted in a robust framework that prioritizes registration, exclusivity, and consumer trust. By understanding the legal tests and learning from judicial precedents, businesses can effectively combat infringement. In a brand-driven economy, proactive measures from registration to enforcement are essential for maintaining competitive edges and preserving goodwill.

For tailored advice, consulting with us at info@lawguide.co.ke or +254716808104.