Trademark Infringement in Kenya: Civil and Criminal Enforcement Remedies

Trademark infringement in Kenya is pursued through two distinct routes, and confusing them is a common and costly mistake. The owner of a registered trademark has a statutory infringement claim under the Trade Marks Act. The owner of an unregistered mark has no such claim and is left with the common law action for passing off. Knowing which route applies decides whether a brand owner facing a copycat has a well-defined remedy or a harder evidentiary battle.

Trademark infringement in Kenya: registered marks

Under section 7 of the Trade Marks Act, valid registration in Part A of the register gives the proprietor the exclusive right to use the mark for the registered goods or services. That right is infringed by a person who is neither the proprietor nor a registered user using the mark by way of permitted use, and who uses a mark identical with it, or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade. Section 8 gives the same right for Part B registrations, but with a narrower position for the claimant: relief, including an injunction, is refused if the defendant shows to the court’s satisfaction that the use complained of is not likely to deceive or cause confusion.

Section 5 draws the line: no one may sue to prevent, or to recover damages for, infringement of an unregistered trade mark. The same section preserves rights of action for passing off. Foreign owners get one more tool. Section 15A protects marks that are well known in Kenya and entitled to protection under the Paris Convention or the WTO Agreement, even where the owner has no business or goodwill here. Such an owner may restrain by injunction the use of an identical or similar mark for identical or similar goods or services where the use is likely to cause confusion.

What the courts have ordered

In Mabati Rolling Mills Limited v Royal Mabati Factory Limited [2020] KEHC 9717 (KLR), decided on 29 April 2020 in the High Court at Nairobi (Okwany J), the plaintiff owned the VERSATILE and ROYAL VERSATILE marks for roofing products and sued a competitor that used VERSATILE branding. The court allowed the claim and granted:

• a permanent injunction against use of the infringing branding;
• an order for expungement or variation of the defendant’s own register entry for ROYAL VERSATILE;
• damages of KES 2,000,000 with interest;
• an account of the defendant’s profits, to be filed within ninety days;
• delivery up of branded iron sheets and tiles for destruction;
• costs.

The judgment shows that, on its facts, a court can order damages and an account of profits in the same case. Do not assume you must choose one. Take advice on the order in which to plead and prove them.

Passing off: protection without registration

A business with real goodwill in an unregistered mark is not without protection. Passing off generally requires the claimant to prove goodwill attached to its mark, a misrepresentation by the defendant that is likely to lead the public to believe its goods or services are the claimant’s, and resulting damage. Because the claimant carries the burden of proving goodwill from scratch, the evidence is heavier than for a registered mark: sales figures, advertising spend and proof of market recognition. In Mabati the plaintiff pleaded passing off alongside infringement.

The criminal route: the Anti-Counterfeit Act

Separately from a civil suit, dealing in counterfeit goods is an offence under section 32 of the Anti-Counterfeit Act (Cap. 510). The Act is administered by the Anti-Counterfeit Authority, and its inspectors may enter and search premises or vehicles reasonably suspected of holding counterfeit goods and take steps to stop their manufacture or sale (section 23). Under section 35, a first conviction carries imprisonment of up to five years, or a fine of not less than three times the prevailing retail price of each article involved, or both. A second or later conviction carries up to fifteen years, or a fine of not less than five times that value, or both.

Civil and criminal routes are independent, so a brand owner does not have to choose between suing for an injunction and reporting a counterfeiter to the Authority. A complaint can produce seized goods and investigator evidence that help a parallel civil claim, but criminal cases move on the prosecutor’s timetable, not yours.

Build the evidence before you send a letter

Whichever route you use, assemble evidence first:

• dated proof of your registration and your own use of the mark;
• photographs, packaging and receipts showing the infringing use;
• a documented test purchase, which fixes the date, place and description of the infringing product;
• where you rely on goodwill, evidence of sales, advertising and market recognition over time.

Choosing a strategy

A cease and desist letter is usually the first step. It may resolve the dispute without litigation, and a documented, ignored warning supports a later argument on costs. Check your own position before you act. A claim built on a mark you assumed was registered, or on a registration that has lapsed, fails once the gap is found, so search the register at KIPI first. For the wider picture, see our guides on trademark licensing and assignment and Kenya’s IP protection tools, or our intellectual property practice.

Frequently asked questions

This article is general information on Kenyan law as at its publication date, not legal advice. Reading it does not create an advocate and client relationship.