Introduction
The recent ruling in the High Court of Kenya at Nairobi in the case brought to light a critical issue in corporate law: the registration of companies with similar names and its impact on existing trademarks. This ruling serves as a crucial reminder for businesses to conduct thorough legal due diligence before selecting a name and further underscores the importance of conducting thorough trademark searches and considering potential conflicts before reserving a company name and registering an entity in Kenya.
In this case, Buupass Kenya Limited (the Plaintiff), a company registered on June 29, 2017, and the registered absolute proprietor of the Trade Mark number 97821 (Part A) for the word and device BuuPass raised concerns against Buspass Kenya Limited (the Defendant) which was registered on November 27, 2020, regarding the potential for confusion in the marketplace due to the similarity of their names.
Court’s Findings and Ruling
1. The name "Buspass" is not only similar in meaning to "Buupass," but it is also phonetically and visually alike, making it strikingly similar to the plaintiff’s trademark, which is likely to deceive or cause confusion in trade, thereby constituting an infringement of the plaintiff’s trademark.
2. This case represents a classic example of passing off, as the Defendant is portraying its services as those of the Plaintiff; the Defendant’s business name is indistinguishable from the Plaintiff’s trademark, making it likely that an average customer would not be able to differentiate between the two, especially since the Plaintiff's change of name did not alter its business model and it continues to operate in the same line of business as when it was known as Magic Bus Ticketing Kenya Limited, meaning that any goodwill or exposure associated with that name is also tied to Buupass Kenya Ltd.
3. The Defendant, Buspass Kenya Limited, was ordered to change its name within 30 days and all its directors and employees were barred from infringing on or passing off Buupass’s intellectual property, including the use of any attributes or designs of trade that were identical or strikingly similar to those of Buupass.
4. An accountant be appointed by the chairperson of the Institute of Certified Public Accountants of Kenya (ICPAK) to establish profits made by Buspass in its use of the trade name Buspass and the Plaintiff’s trademark Buupass, and for passing off the plaintiff’s goodwill and services.
Credits: N.K.
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