Register your name as a trademark and protect all that’s yours


Register your name as a trademark and protect all that’s yours

A majority of Kenyans lack expert advice hence exposing their brands to imitation

What’s in a name?

Brand value refers to the premium or extra money consumers are willing to pay for a product or service purely because of real or perceived quality associated with the company and it’s product.

The most valuable brand in the world in 2018 was Apple, according to Forbes. In Kenya, Shell, Airtel, DSTV, Co-operative Bank, Equity, Tuskys, Sanlam and Gertrudes were the top-ranked brands in the respective sectors within which they operate, as per a survey conducted by mSurvey in the third quarter of 2018.

''IP valuation will become just as important as company valuation or property valuation. Someday, you'll be able to walk into a bank and receive a loan facility based on the value of a single trademark... Think about it... a car is just a shell and mechanical parts until you slap a logo on it. That logo is the difference between the price of a Nissan and, say, the price of a Porsche,'' says Ms Sarah Ochwada, an IP lawyer who's assisted many clients register their intellectual property.

The long journey to the top begins with registering a name.

Over 120,000 trademarks are registered in Kenya, according to the Intellectual Property Institute (KIPI), the country's custodian of records on Intellectual Property. The oldest trademark in the Kenyan register is a crocodile logo filed on March 8, 1913 by Ralph Martindale & CO. Ltd of England for cutlery and edge tool products.

Some 1,414 trademarks were registered between July and November, last year.

KIPI data shows (see chart on top of page) that the number of Kenyans turning up to register their businesses and brand names and identities has risen gradually in the last ten years. The 159 percent increase from 1073 in 2007 to 2783 in 2017 can be attributed to growth in the business sector and increased awareness.

''There's still a long way to go regarding IP awareness, but we are seeing Kenyans slowly beginning to appreciate that it is necessary,'' says Ms Ochwada.

A 40 percent rise in the number of foreign entities securing trademarks in Kenya also points to growth in foreign business interest in the country.

There are 44 international classes for purposes of classification of goods and services for registration of trademarks. Class 5, which covers covers pharmaceutical, veterinary, dental and poison product, had the highest number of listings (269), or 13% of the total, within the five months.

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Get a lawyer

An analysis of the five months’ data shows that a majority (59 percent) of the trademark applicants in Kenya don't use Intellectual Property (IP) lawyers, instead choosing to process the registration by themselves. Applicants under the same category also registers their brands under much fewer classes than those who use lawyers, leaving anyone free to utilise the name in other categories.

Ms Ochwada points out that an IP lawyer helps a client to figure out all the potential rooms for imitation and how the property can be protected against such. ''Services of IP Lawyers are available, but just like in any other service industries, clients need to do some research to find out which practitioners are best-suited to cater to their needs according to their budget,'' she says.

Under each of the 44 classes, provision of keywords define specific segments that a brand applies. Example, a trademark name ''Chilobae'' only cover two keywords, namely entertainment and sporting activities. Another person can therefore use it under other categories such as detergents, perfume, food, etc.

Trademarks registered with the help of lawyers have a higher number of keywords than those in which the clients represented themselves.

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It turns out that generally, companies that can afford lawyers are large and mainly foreign entities getting into the Kenyan markets. Since they seek to protect their already-known brands from any misuse and infringement, their lawyers ordinarily register the brand under all or most classes using the maximum possible number of keywords.

On the other hand, small and medium-sized local entities have niche brands and tend to seek protection only in their current industry of operation.

However, that is detrimental, as the strategy employed may lead to brand squatting - a scenario where another entity takes over a brand and makes use of it in a different sector. Such is the case in civil suit no. 138 of 2014 in which Solpia Kenya Limited sued Style Industries Limited and Sana Industries Limited over the use of the trademark ''GALAXY''.

Solphia, which is involved in the production of hair pieces, wigs and weaves, registered the trademark under Class 26 that covers lace and embroidery, ribbons and braids, buttons, hooks and eyes, pins and needs, and artificial flowers.

The company lost the case because the trademark (Class 26) never covered hair, wigs and extensions, thus the defendant was free to piggyback on a brand built by Solphia and launch a rival business.

However, when considering time taken to process trademark applications, the ones submitted by lawyers generally take longer to process. This is because lawyers file lengthy and sometimes complex trademarks that require more time to process. Trademarks registered without the help of a lawyer, on the other hand, are much more straightforward and therefore handled quickly. But this simplicity also leaves loopholes for exploitation.

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A new frontier

Traditional brands emerged from business ventures that invested a significant amount of capital in marketing to promote brand wording, logo and slogans. In the new age of social media, savvy entrepreneurs can turn popular social phrases into business ventures. One such entrepreneur is Ms Mercy Randa who, on May 10, 2018, filed for two trademarks - the words Chilobae and WineOclock.

The quirky word Chilobae is a corruption of the name of former Independent Electoral and Boundaries Commission (IEBC) CEO, Ezra Chiloba. In typical online speak, bae is a short form of the word babe, a slang word referring to a person desired by another.

During the repeat presidential elections, Kenyans On Twitter (KOT), impressed by Mr Chiloba’s apparent charm and charisma, corrupted the two words Chiloba and bae into Chilobae.

It is when the word became a top-trending phrase on Twitter that Ms Randa saw a business opportunity in the name. She took a chance and registered the word as a trademark under Class 41 category (entertainment and sporting activities).

She believes the brand Chilobae has a strong identity and likely to last long.

In episode 15 of season 12, the animated political satire show, XYZ, used the word Chilobae. The episode, titled Up Close and Personal with Chebukati and Chilobae, aired on August, 2017, one year before KIPI granted Ms Randa the trademark rights, hence she could not take legal action.

In future, XYZ can still use the word without infringing on the trademark due to Section 10 of the Trademarks Act which reads:

Nothing in this Act shall entitle the proprietor or licensee of a registered trademark to interfere with or restrain the use by any person of a trademark identical with or nearly resembling it in relation to goods in relation to which that person or predecessor in title of his has continuously used the trademark from a date anterior.

Hence, anyone who has used the word Chilobae on Twitter before May 10, 2018 can keep using the phrase for business purposes.

Also, Ms Randa's interest in wine had been growing since 2010. Around 2012, one of her former colleagues jokingly coined the hashtag #WineOclock on Twitter, so she took it up and every time she enjoyed a glass of wine, a social media post would follow with ''#WineO'clock''.

It somewhat started gaining traction on Twitter, and she immediately saw its commercial potential – mainly because East Africa is increasingly becoming a wine-consuming region. In 2015, she registered the word as a business name with no immediate plans of what to do with it.

Last year, Mercy registered the trademark and is currently promoting it on Instagram. ''There’s much commercial potential for the brand name. An idea is simmering in my mind and I will serve to the market once it is ready,'' she says.

The question is whether she can fend-off the potential brand infringement.

The author is a data scientist.