Bench Bulletin - Issue 12 - Kenya Law Reports

KENYA LAW REPORTS
BENCH BULLETIN
FROM THE COURTS — HIGH COURT
Infringement of Trademark Rights
Glaxo Group Limited v Syner-med Pharmaceuticals Ltd
Miscellaneous Application 792 of 2009
High Court at Nairobi
L. Kimaru. J
February 4, 2010
Reported by Andrew Halonyere.
Intellectual Property – infringement of trademark rights – appeal against the decision of the Registrar of Trademarks to
register the respondent’s trade name “SYNERCEF” – appellant’s contention that the trade name was phonetically similar in
pronunciation and appeared visually similar to another registered trademark “ZINACEF” – whether there was infringement
of trade mark rights - whether the appeal had merit – Trademark Act (Cap 506) sections 7,14,15,18 (1),(3) and 52.
The appellant and the defendant were both pharmaceutical companies engaged in the
manufacture and sale of pharmaceutical products. The appellant registered a trademark
“ZINACEF” in Kenya in respect of class 5 in relation to pharmaceutical and medicinal
preparations under the Trade Marks Act. The respondent applied to the Registrar of
Trademarks to register the trade name “SYNERCEF” as a trademark in the same class. The
appellant opposed the registration of the trademark on the ground that it sounded phonetically
and appeared visually the same as the appellant’s trademark “ZINACEF”.
The Registrar of Trademarks, having heard representations made by the appellant and
the respondent, dismissed the appellant’s opposition on among other grounds, that the
pronunciation and semantics of the first syllables were different.
Being aggrieved by the decision, the appellant, pursuant to the provisions of Section 21(6) & (7) of the Trade Marks
Act filed an appeal to the High Court.
The issue before the High Court was whether the Registrar had reached the correct decision in disallowing the opposition
by the appellant for the registration of the trademark “SYNERCEF”.
Held:
1. It was evident that the Registrar of Trade Marks fell in error when he truncated the name “SYNERCEF” and “ZINACEF”
by excluding the suffix “CEF” and thereby reaching the wrong conclusion that the prefix “SYNER” and “ZINA” had no
meaning and therefore the subsequent registration did not constitute an infringement of the appellant’s trade name.
The correct position of the law was that in such cases, the words that were the subject of the dispute relating to a
trade name should have been considered as a whole and not in the manner that the Registrar did. If the Registrar had
considered the words as a whole he would undoubtedly have arrived at a different decision. Therefore it was clear that
the words “SYNERCEF” and “ZINACEF” were phonetically similar in pronunciation and it was likely to cause confusion
and deception in the market.
2. The Court took Judicial notice of the fact that many people in Kenya were likely to pronounce the letter “SY” as
“ZI” and therefore the two names would be pronounced in a phonetically identical manner and not distinctly as was
claimed by the respondent.
3. The fact that the two products sold by the appellant and the respondent were prescription only, did not preclude
the fact that confusion would have been caused when an order was made orally or by telephone to such professions
such as pharmacists or doctors.
4. The name “SYNERCEF” was so similar, phonetically and visually to the registered trade mark of the appellant
“ZINACEF” to an extent that it would cause confusion and deception in the minds of the public.
Appeal allowed, registration of “SYNERCEF” as a trademark cancelled.
Advocates
Mr Kinoti for the Appellant,
Mr Sharad Rao for the Respondent
Issue 12: April-June 2010
75