Adams Advisory - Africa Update 2020

of Biostadt has been ordered to attend the hearing of the expungement proceedings in person.
While cross-examination or oral testimony is unlikely to be the norm in proceedings before the Registrar in
Kenya, it is worth bearing in mind that, in certain circumstances, it is justifiable and within the discretion of
the Registrar to direct that a deponent travels to Kenya to provide oral evidence.
Expungement Application – CAT vs. AOT
In January 2016, Caterpillar Inc. filed an application for
the expungement of Kenyan trade mark registration
no. 82764 AOT (word & device) in class 25, in the name
of Al Imran Investments Limited. The expungement
application was based on the AOT & Device mark’s
confusing similarity to Caterpillar Inc.’s prior, registered
and well-known CAT & Design trade mark, and the fact
that the mark was being used on lookalike CAT shoes to
create confusion.
The parties’ respective marks:
The parties’ respective shoes:
The matter was not defended, but Caterpillar Inc. was
required to file evidence with the Registrar of Trade Marks
and argue the issue at a hearing. On the 17 th of September
2019, the Registry handed down a favourable decision,
ordering the cancellation of the AOT & Device trade
mark registration. In its ruling, the Registrar analysed the
respective marks and held that they were visually and
conceptually similar as both marks contained the letters “A”
and “T”, as well as a triangle device, which was a dominant
component in both marks. Based on the similarity of the
marks, as well as the respective goods in relation to which
the marks had been registered, the Registrar found that Al
Imran Investments Limited did not have a valid legal claim
to the AOT & Device mark.
Although the outcome of the case was positive, the Registrar
found that insufficient evidence had been furnished to
prove that the CAT & Design mark was well-known in Kenya
and, therefore, deserving of protection under Section 15A
of the Trade Marks Act. In making this finding, the Registrar
considered the WIPO Joint Recommendations Concerning
Provisions of the Protection of Well-Known Marks, as well as
the relevant provisions of the Trade Marks Act, and found
that the requirements needed to prove a mark is well-known
had not been met. However, this did not preclude a finding
that the AOT & Device mark ought to be removed from the
Register.
The Registrar also commented on the requirements for the
authentication of evidence filed and stated explicitly that
every annexure of a statutory declaration must be “properly
sealed under the seal of the Commissioner as required
by law”, and that failing to do so the evidence may be
declared inadmissible.
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