The Limited Liability Partnerships Regulations (“LLP Regulations”), issued by the Attorney General following Section 35 of the Limited Liability Partnerships Act 2011, were published in the Kenya Gazette Notice of 12th September 2014. The LLP Regulations offer greater certainty where a company‘s registered name is identical to a registered trademark belonging to a third party. However, the Companies Act, Cap 486 of the Laws of Kenya and the Trademarks Act, Cap 506 of the Laws of Kenya, which governs companies and trademarks respectively, are not clear on the rights under which legislation would prevail.
One critical issue is whether the registration of companies and use of such company names in the course of trade would constitute trademark infringement. The LLP Regulations include a provision on the restrictions applicable to registration of limited liability partnership names and even though there have been court decisions discussing and providing a way forward, the provisions of the LLP Regulations go a long way in helping.
Section 15(i) of the LLP Regulations states that: a name is undesirable if it includes the name of a registered trademark unless a document signed by the owner of the trademark and indicating consent to its use is provided. This means that it will not be possible for someone to register limited liability partnerships in Kenya with names similar to existing registered trademarks.
This apparent disharmony between the provisions of the Companies Act and those of the Trademarks Act was discussed by the Kenyan High Court in H.C.C. No. 840 of 2010, Agility Logistics Limited & 2 Others versus Agility Logistics Kenya Limited.
Here the 3rd Plaintiff acquired a UK incorporated company in November 2006 known as Agility Logistics Limited, and decided to rebrand its global subsidiaries ‘Agility’ while globally advertising it.
As part of its strategy for entering the Kenyan market, in 2007 the Agility group bought a clearing company, Starfreight Logistics Limited. This necessitated a name change to Agility Logistics Limited by the 1st Plaintiff and the 3rd Plaintiff then registered the trademark Agility on 24th February 2009.
In October 2007, the Defendant registered the business name Agility and the company Agility Logistics Kenya Limited in September 2008. Aggrieved by this, the Plaintiffs filed an application for injunctive orders restraining the Defendant from trading, advertising, marketing and/or in any other way dealing with the name ‘Agility Kenya Limited’ or any other name resembling the 1st Plaintiff’s name.
The Court found that while the Companies Act governed the registration of company names, it did not extend protection to the name of the company itself as does the protection provided by a trademark. The Court also noted that the Companies Act only protects names to the extent that no other company can be registered by a similar name but it does not protect the intellectual property in the name itself as to exclusive use as a trademark does.
The Court also found that the protection provided to the name Agility by the trademark registered in favour of the Plaintiffs, by far overrides the protection of the name Agility Logistics secured through the mere registration of the name as a company. The Court stated that the exclusivity in the use of the name afforded to the Plaintiff through the Kenyan registration of the mark and worldwide by virtue of the status of ‘well known mark’, conferred locus standi on the Plaintiffs to sustain a claim for infringement of the mark that the Defendant cannot equally enjoy by virtue of registration of the company under the Companies Act.
Even though the decision has helped, the inclusion in the Companies Bill, 2014 of a provision declaring registered trademarks to be undesirable company’s names would go a long way. It would also serve to ensure that the rights of proprietors of registered trademarks under Section 7 of the Trademarks Act are observed and respected.