An American manufacturer of hair and beauty products has lost a trademark battle with a Kenyan firm, a former distributor of its products.
Assistant Registrar of Trademarks Eunice Njuguna dismissed allegations by Chicago-based Afam Concept Incorporated that Jampur General Agencies had infringed its rights by running away with the trademark of the products.
Ms Njuguna allowed Jampur General Agencies to continue using the disputed trademark, ‘Vitale V’.
The trademark was being used as a brand of various beauty and cosmetic products worldwide.
Effectively, the ruling drives the American manufacturer out of Kenya’s multibillion-shilling beauty market as it will no longer sell the products locally under the disputed brand. The Kenyan firm has won proprietorship of both the trademark and brand.
The legal battle reveals that the two were initially business partners before Jampur registered the trademark allegedly without Afam’s knowledge.
They had an eight-year partnership from 2011 to 2018. During the period, Jampur used the trademark and the brand and it invested heavily in promoting and marketing goods bearing Vitale V in Kenya.
The trademark was registered on May 10, 2011, by businessman Muchemi James Kihara. The registration was under “international class 3 of the Nice Classification of goods and services”.
A decade later, on May 7, 2021, the American firm filed a request for the expungement of the trademark over allegations that the brand was registered fraudulently.
To sell the products, including Vitale V in Kenya, the Chicago-based company entered into a distributorship assignment agreement dated May 21, 2011, with the Kenyan businessman.
He was appointed as their exclusive distributor and representative for the sales and distribution of Vitale Oil naturals in Kenya. The Americans also instructed him to commence the registration of Vitale V in their favour.
Describing themselves as the creators and true owners of the trademark, the Americans told the Registrar that without their knowledge, and without their approval or consent, the businessman registered himself as the proprietor of the trademark with the Registrar of Trademarks.
Afam, which has been in operation since 1986, stated that Vitale V products were being distributed worldwide and the trademark is registered with the European Union Intellectual Property Office and the African Intellectual Property Organisation.
It is also registered in Ghana and in the United States. It added that by the time it came to know that the businessman had “irregularly” applied for the registration of the trademark, the mark had already been registered.
But the Registrar dismissed the allegations and ruled that the registration by the local firm was not based on fraud or misrepresentation. She said the trademark has validly existed in Kenya and the same qualifies for protection under the provisions of Section 16 of the Trade Marks Act.
“Afam Concept Incorporated was not able to prove that they were aggrieved by Jampur General Agencies’ trademark ‘Vitale V’ remaining in the Register of Trademarks in Kenya and have, therefore, not succeeded in these expungement proceedings,” said Ms Njuguna, a lawyer.
