M-Kopa Kenya Limited v. John Waweru Njenga t/a M-Kopo Kastomer Care
& Accessories
Civil Suit No. E403 of 2023
Judgment Date: January 23, 2025
Court: High Court of Kenya at Nairobi, Commercial and Tax Division
Judge: Hon. Justice Peter Mulwa
2. Parties Involved:
- Plaintiff: M-Kopa Kenya Limited, an asset-financing and technology services company.
- Defendant: John Waweru Njenga, previously an agent of the plaintiff, operating a competing business under the name “M-Kopo Kastomer Care & Accessories.”
3. Facts of the case:
- M-Kopa Kenya Limited owns a registered trademark for "M-Kopa" in Kenya, assigned to it by Mobile Ventures Kenya Ltd in 2015, and renewed in 2021.
- The defendant, a former agent, set up a business named "M-Kopo Kastomer Care & Accessories" using branding nearly identical to M-Kopa’s logo and name.
- The plaintiff alleged the defendant was misleading the public, suggesting affiliation with M-Kopa, thereby infringing on their trademark and engaging in unlawful passing off.
4. Legal Issues:
1. Trademark Infringement: Did the defendant infringe on the plaintiff’s registered trademark "M-Kopa"?
2. Passing Off: Did the defendant’s conduct amount to passing off their business as that of the plaintiff’s?
3. Reliefs Sought: Is the plaintiff entitled to injunctive reliefs, damages, and an audit of the defendant’s profits?
5. Arguments:
- Plaintiff: Argued that the defendant knowingly used similar branding to deceive customers into thinking they were dealing with M-Kopa or a related entity.
- Defendant: Did not file a defence or appear in court despite being served.
6. Legal Principles Applied:
- The court relied on the Trade Marks Act (Cap 506) and cited key case law including:
- Pharmaceutical Manufacturing Co. v. Novelty Mfg. Ltd (HCCC No. 746 of 1998): Held that trademark infringement is a tort of strict liability; intention is irrelevant.
- Bidco Africa Ltd v. Fry-Cide Ltd (2022): On the test for deceptive similarity in trademarks.
- Established that similarity in business name, font, and color scheme between "M-Kopo" and "M-Kopa" was likely to confuse the average consumer.
Court's Analysis:
Trademark Infringement: The court noted the striking similarity between "M-Kopo Kastomer Care & Accessories" and "M-Kopa Kenya Limited," observing that the average consumer could easily confuse the two. The defendant's use of the plaintiff's logo without authorization further compounded the likelihood of confusion, constituting trademark infringement.
Passing Off: The defendant's actions misled the public into believing that his business was affiliated with or authorized by the plaintiff, thereby engaging in passing off.
Legal Precedents: The court cited Pharmaceutical Manufacturing Company v. Novelty Manufacturing Limited (HCCC No. 746 of 1998), emphasizing that trademark infringement is a tort of strict liability, where intention and motive are irrelevant considerations.
7. Holding (Court Decision):
The High Court found in favor of the plaintiff and issued the following orders:
a) Permanent Injunction:
Restraining the defendant from:
- Using the mark “M-Kopo” or any similar variation;
- Passing off his business as affiliated with M-Kopa.
b) Mandatory Injunction:
Directing the defendant to:
- Remove, demolish, or destroy any signage, advertising material, or branding using “M-Kopo.”
c) Forensic Audit:
- Ordered to determine profits earned by the defendant using the infringing mark;
- Defendant to pay the plaintiff whatever amount is found due.
d) Costs:
- Awarded to the plaintiff.
8. Significance:
This judgment affirms the importance of protecting intellectual property and trademarks in Kenya. It reinforces that brand owners can enforce their rights against infringers even if the infringer is a former agent or affiliate.
This case underscores the importance of protecting intellectual property rights and serves as a precedent for enforcing trademark laws in Kenya. It highlights the need for businesses to be vigilant against unauthorized use of their trademarks and the legal recourse available to safeguard brand identity.
