On 26 June 2023, the Registrar of trademarks determined a case that challenged the registration of a trademark and shed light on the registration of Geographical Indications in Kenya. The matter commonly referred to as the “Tinderet Case” can be traced back to 22 December 2017 when George Williamson & Co. Limited (the proprietor) filed an application to register their trademark “TINDERET TEA FARM” before the Registrar of Trade Marks at the Kenya Industrial Property Institute (KIPI).
The Registrar of Trade Marks subsequently examined the mark, approved it and it was eventually entered in the Register of Trade Marks with effect from 22nd December 2017 and a Certificate of Registration was issued. However, the Applicants in the matter challenged the decision to have the mark included in the Register of Trade Marks in Kenya.
The Applicants claimed that the ‘Tinderet Tea Farm’ mark failed to meet the requirements for registration under section 12 (1) (d) of the Trademarks Act. Further, the Applicants asserted that while they had no commercial interest in the use of the mark, they were exercising the right to engage in public interest litigation as provided in the Constitution of Kenya. The Constitution of Kenya provides that, ‘Court proceedings may be instituted by a person acting in the public interest…’1 The interest of the Applicants was to ensure that there was purity in the Register of Trade Marks and also the jurisprudential value of the practice of Trade Marks Law in Kenya.
Expungement claims and the case for Geographical Indication
The Applicants based their claims on three main issues namely: geographical description of the Tinderet area, distinctiveness of the mark, and registration of a geographical indication. Concerning the first issue, the Applicants claimed that Tinderet is a tea growing area located in Nandi County and it is also a name of a politically demarcated Constituency with constituents that also has a representative in Parliament-Tinderet Constituency. Additionally, the Kenya Tea Development Agency (KTDA) has classified the area as a tea-growing zone with unique climatic conditions that influence the quality of tea produced in the area. The Applicants, therefore, claimed that the proprietors’ mark is an ordinary signification of a tea farm in Tinderet contrary to section 12(1) (d) of the Trade Marks Act.2 They also relied on section 20 of the Trade Marks Act which empowers the Registrar or the court to correct any errors connected with the application or permit an Applicant to amend their application.3
In supporting their expungement claim, they relied on section 35(1) of the Trade Marks Act which empowers the Registrar to make an order for expunging or varying an entry in the Register. The Applicants claimed that if the proprietors’ mark remained in the Register, there was a high likelihood that the proprietors may misuse, prevent, limit and control its use by the people of Tinderet or traders and tea farmers from the region.
The second issue of contention the Applicants raised involved the lack of distinctiveness of the proprietors’ mark. The Applicants claimed that the proprietors’ mark was incapable of distinguishing the proprietors’ tea and related products from those of other producers, traders and even farmers that had been produced in Tinderet. They relied on section 13 of the Trade Marks Act which prohibits the registration of trademarks that are incapable of distinguishing goods or services that a registered owner is connected with in the course of trade from other goods or services where no such connection exists.
The final issue raised was that of the registration of Geographical Indications (GIs). GI has been described as a sign that is used to ‘identify a product whose quality, reputation or other such characteristics relate to its geographical origin.’4 Kenya does not yet have a GI law in place but instead it protects GIs in its national legislation through incorporating it in trademark law. According to the Trade Marks Act, geographical names or other indications of geographical origin may be registered as collective trademarks or service marks.5 Certification marks are also used in Kenya to protect geographical indications.6 According to the Trade Marks Act, a certification mark is a mark ‘adapted in relation to any goods to distinguish in the course of trade goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy or another characteristic from goods not so certified..’7 Collective trademarks differ with certification trademarks in that the former are limited to use by a ‘certain group of enterprises’.8 A collective trademark is often owned by an association, public institution or cooperative.9
A detailed analysis of the concept of geographical indication including certification and collective marks was dissected in a previous blog that would aid in comprehending the gist of this case. Regarding GI protection, the Applicants claimed that:
Tinderet tea is a geographical indication of tea originating from the area (Tinderet)
As a geographical indicator of tea from the region, the entry of the mark in the Register of Trade Marks would deny and also threaten the enjoyment of intellectual property rights in the term Tinderet tea and Tinderet Tea Farm.
The Applicants also included GI qualities of Tinderet tea in their statutory declaration to support the basis for their GI claim. In it, the Applicants relied on section 40 A (5) of the Trade Marks Act that is concerned with registration of geographical names or other indications of geographical origin as collective trademarks. They therefore claimed that the word Tinderet in relation to tea should be protected as a geographical indication. Additionally they claimed that tea from the Tinderet region is distinct since it possesses special qualities attributable to its production that has been influenced by climatic as well as environmental conditions in the area it has been grown. The Applicants also relied on publicly available information from the Kenya Tea Development Agency (KTDA) to describe tea from the Tinderet area. For instance the Agency describes tea from the region as intense and exotically unique.
The proprietors, however, defended their registered mark and alleged that the Applicants had not adduced adequate evidence to illustrate that the words “Tinderet Tea Farm” connote a geographical indication. Further, they alleged that a statute for registration of geographical indications in Kenya does not exist and that the registration of geographical indications as collective marks under the Trade Marks Act was unclear. They also questioned whether statements attributed to KTDA could be used as the sole criteria of determining whether Tinderet is a geographical indication.
In the ruling, the Registrar held that the trademark is distinctive because the proprietor’s trademark has been used in the Kenyan market for approximately thirteen years. The long duration therefore implied that the trademark had acquired sufficient distinctiveness. As to whether the trademark should have been rectified in accordance with section 35 of the Trade Marks Act, it was held that the proprietor had a valid and legal claim to the trademark “Tinderet Tea Farm” in accordance with the provisions of section 20 of the Trade Marks Act.
In determining the final issue concerning geographical indication, the Registrar disagreed with the Applicants for the following reasons:
According to the provisions of section 40 A of the Trade Marks Act, only an association may make an application for registration of a collective mark and it should be accompanied by rules governing the trademark use.
A trademark comprising the geographical term Tinderet can be registered as a certification mark as per the provisions of section 40 of the Trade Marks Act.
The Register of Trademarks already contains trademarks that comprise geographical names that identify various goods and services.
The Applicant was however partially successful in moving the Registrar to direct the Proprietor to record conditions of use of the ‘Tinderet Tea Farm’ trademark. These conditions were: that the mark will be used only on the tea grown in the Tinderet area; that the mark will be used to identify the origin of the Proprietor’s tea; and that the Proprietor will not use the mark in a manner that would cause negative reputation to the Tinderet tea growing and production area.
It was, therefore, held that the trademark “Tinderet Tea Farm” is validly entered in the Register of Trademarks. In summation, the case is useful in contributing towards the understanding of the current Registry practice in registering and protecting geographical indications in Kenya, and the challenges faced in this regard. This is because it exposed the intricacies of geographical indications protection in Kenya and analysed collective and certification trademarks that have been incorporated in the law. However, a single comprehensive law tackling the issue of geographical indications protection in the country is still required so as to provide clarity and address emerging geographical indications issues.
image by Hari gurung77
1Constitution of Kenya, Article 22(2) (c)
2According to the provision, ‘In order for a trade mark (other than a certification trademark) to be registrable in part A of the register, it must contain or consist of a word or words having no direct reference to the character or quality of the goods and not being according to its ordinary signification a geographical name or a surname.
3Trade Marks Act 2012, section 20(7) provides that, ‘The Registrar or the court as the case may be, may at any time, whether before or after acceptance , correct any error in or in connexion with the application, or may permit the applicant to amend his application upon such terms as the Registrar of the court may think fit.’
4 European Commission, Geographical Indications <https://policy.trade.ec.europa.eu/enforcement-and-protection/protecting-eu-creations-inventions-and-designs/geographical-indications_en > accessed 10 July 2023
5Section 40 A(5)
6Ines Tavares, Protection and Use of Certification Trademarks in Africa (24 August 2020) <https://inventa.com/en/news/article/536/protection-and-use-of-certification-trademarks-in-africa > accessed 10 July 2023
7Section 40 (1)
8Tavares (n 6)
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