December 01 2008
A trademark can take the form of a name, a sign, a logo, a mark, a figure or a number. It usually creates a link between a product or service and its source. Thus, such marks are typically part of a marketing strategy designed to distinguish one company’s goods or services from those of another.
Once a trademark is registered, its proprietor enjoys the exclusive right to use it in relation to its products or services. Competitors are prohibited from using a mark that is identical or similar to a registered mark where such use is likely to deceive the public or cause confusion in the course of trade.
Competitors increasingly seek to market their products or services by establishing a brand identity which is as close as possible to that of the market leader. However, if a party feels that its rights in a mark have been infringed, it must consider various factors before bringing a lawsuit. The burden of proof lies with the plaintiff, which must show that a resemblance exists between the marks and that such resemblance is deceptive. The plaintiff is required to provide witnesses drawn from the general public to testify to the resemblance between the plaintiff’s mark and the offending mark. Deception can be based on similarity in names or phonetic qualities, get-up, colours and general appearance.
In Unilever Plc v Bidco Oil Products (2004) 1 KLR 57 the judge stated that:
“The effect of th[e] evidence adduced from the ordinary members of society... called by the plaintiff as witnesses is that the get-up of Gold Band containers was not in any way confusing, as the colours [and names] were clearly different. I also had the opportunity to see the exhibits in court and I... agree that there can be no dispute as to passing-off, as the two products are in my mind different in colour, appearance and... wording, except that the word ‘band’ is used in both. The three witnesses representing the public have not satisfied me that the use of the words ‘gold band’ confused them and led them into buying the defendant’s product [in the belief that] it was the plaintiff’s product.”
The judge laid down the principles by which the courts must determine infringement:
Thus, the test of resemblance laid down in this case is whether a trademark adopted by a trader so resembles that of a rival that it is capable of misleading ordinary consumers who purchase such an item with ordinary caution.
The judge held that:
“If a purchaser looking at the product offered to him [or her] would naturally be led [by] the mark... on it to suppose it to be the product of [a] rival manufacturer and [to] purchase it in that belief, the court considers the use of such a mark to be fraudulent.”
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