Does withdrawal of a threat of opposition amount to a surrender of your rights to institute cancellation proceedings in respect of the same trade mark? In Kenya, in terms of a recent decision handed down by the Assistant Registrar, the answer is no.

In this matter, Corning Incorporated (“Corning”) applied in 2009 to cancel a trade mark registration PYREX in the name of Casebella Associates Limited (the “Casebella”) on the basis of inter alia their own prior rights.

Casebella applied to register the PYREX trade mark in 2005.  When the trade mark application was advertised for formal opposition purposes, Corning sought extensions of the opposition term up until 29 March 2007.  However, on 12 April 2007, Corning’s local representative advised the Registrar that Corning did not wish to proceed with the opposition and stated that the Registrar may proceed to issue the registration certificate.

It is worthwhile to mention that one should avoid advising any Registrar to issue a registration certificate, when you have indicated that you are interested in opposing the registration of a trade mark. It is better to simply advise that you do not wish to proceed with the opposition, and to reserve your rights to take action.

On 11 May 2007, the trade mark PYREX therefore proceeded to registration in the name of the Casebella.

Interestingly, Corning submitted that Casebella previously was their local distributor for the Kenyan market, who applied for registration of Corning’s trade mark without Corning’s consent. This was clearly done in bad faith as Casebella were well aware that Corning is the genuine proprietor of the PYREX trade mark.  

Casebella denied that there was an agency relationship between themselves and Corning, but admitted that they had been selling the Corning’s goods for the last 40 years.  They claimed that they were not going to “give up on the brand easily”, and that they routinely register the trade marks of third parties in situations where they are concerned that their “principals would forsake them”.

Casebella argued in the cancellation application that Corning’s letter to the Registrar stating that he could issue the registration certificate amounted to a surrender of the Corning’s rights in and to the PYREX trade mark.   Therefore, Casebella argued that Corning’s application for cancellation of Casebella’s registered trade mark amounted to an abuse of due process.

After having considered all of the facts pertaining to this matter, the Assistant Registrar concluded that he needed to determine the following key issues:

  • Who is the rightful owner of the PYREX trade mark in Kenya; given that trade mark rights are territorial?
  • Whether the Corning’s local representative’s letter withdrawing Corning’s threat of opposition amounted to a complete surrender of their rights in respect of their trade mark, and a subsequent bar to the removal of Casebella’s trade mark;
  • Whether two identical trade marks in the name of two different proprietors can co-exist?

Who is the rightful owner of the PYREX trade mark in Kenya?

It was clear to the Assistant Registrar that both parties were claiming to be the genuine owner of the trade mark, to the exclusion of the other.   The Assistant Registrar held, on the grounds of Corning’s earlier and valid trade mark registration for PYREX, Corning’s prior sales and proof of Corning’s agency relationship with the Casebella, that Corning is the bona fide proprietor of the PYREX trade mark in Kenya.

Whether the Corning’s local representative’s letter withdrawing the Corning’s threat of opposition amounted to a complete surrender of their rights in respect of their trade mark, and a subsequent bar to the removal of Casebella’s trade mark

The Corning’s local representative’s letter stated the following:

“we have client’s instructions that it does not wish to proceed with the opposition. In the circumstances please proceed to register the above trade mark 57546 PYREX (word) class 21 and issue the registration certificate to the Corning.”

The Assistant Registrar stated that Section 36A of the Kenyan Trade Marks Act allows a proprietor to voluntarily surrender a registered trade mark.  In addition Section 36B of the Act also states that a proprietor of an earlier or other right, who acquiesces to use of a trade mark for a continuous period of 5 years, being aware of that use, shall be disentitled to inter alia apply for invalidation of the later trade mark.

Although the Assistant Registrar agrees that the Corning’s conduct of withdrawing its opposition and then applying to expunge a trade mark might amount to an abuse of process, he believes that the Corning has not lost their right to take action, as a five year period had not yet lapsed since the Casebella applied to register the PYREX trade mark.

Therefore, the Assistant Registrant held that the Corning did not acquiesce to the Casebella’s registration of the PYREX trade mark, and was not disentitled (on the basis of the letter submitted to Registrar) to bring an application for cancellation of the Casebella’s trade mark registration.

Whether two identical trade marks in the name of two different proprietors can co-exist

Casebella is the registered proprietor of the trade mark PYREX in class 21 (various household goods, including glassware), and Corning is the registered proprietor of the trade mark PYREX in class 15 (various household goods, including glassware).  The goods covered by the Corning’s registration are the same as those covered by the Casebella registration, and only appear in a different class due to an update in the classification system.

Section 15 of the Trade Marks Act prohibits the registration of identical or similar trade marks in respect of similar or identical goods.  However, it does allow for the co-existence of trade marks, if there has been honest concurrent use of the respective trade marks by both parties.

The Assistant Registrar did not find any honest conduct on the part of Casebella.  At the time that they applied to Register the PYREX trade mark, they were well aware of the Corning, Corning’s use of and rights in and to the PYREX trade mark, and they admittedly routinely register trade marks belonging to third parties to effectively prevent their principals from terminating agreements with them.

The Assistant Registrar implored the Registrar to guard against such blatant, devious and malicious practices by agents, distributor, licensees or others authorised to sell goods on behalf of proprietors of trade marks in order to protect the public.

The Assistant Registrar held that the respective trade marks cannot co-exist as they are identical and cover identical goods.  Use by both parties of the same trade mark will inevitably cause confusion in the market place, as to the true source of the goods sold under the trade mark.

In conclusion, Corning’s cancellation application was successful, although Casebella is entitled to take the decision on appeal.