Trademark infringement in Kenya is addressed through two distinct legal routes, and confusing the two is a common and costly mistake. A registered trademark gives its owner a statutory infringement claim under the Trade Marks Act. An unregistered mark, however well known, has no such claim, its owner is instead limited to the common law tort of passing off. Understanding which route applies, and what each requires to succeed, determines whether a brand owner facing a copycat competitor has a fast, well-defined remedy or a harder evidentiary battle.
Infringement of a Registered Trademark
Under section 7 of the Trade Marks Act (Cap 506), registration in Part A of the register gives the proprietor the exclusive right to use the mark, and any person who is not the proprietor or a licensee infringes that right by using an identical or confusingly similar mark in relation to the same or similar goods or services in the course of trade. Registration in Part B, under section 8, gives a similar right, though the Act allows a narrower defence there where the defendant proves its use is not actually likely to deceive or cause confusion. Section 5 draws a hard line around all of this: no person may bring an infringement action over an unregistered mark, though this does not affect a separate passing-off claim.
Kenyan courts treat infringement as a matter of strict liability. In Mabati Rolling Mills Limited v Royal Mabati Factory Limited, Civil Case 35 of 2017, [2020] KEHC 9717 (KLR), Okwany J (High Court at Nairobi, Milimani Commercial and Admiralty Division, 29 April 2020) found the defendant liable for using the mark VERSATILE on roofing products in a way that imitated the plaintiff’s registered VERSATILE and ROYAL VERSATILE marks, regardless of whether the defendant intended to deceive anyone. The court’s reasoning was direct: where two competitors in the identical product category share both a company name and a trademark, the innocent-coincidence explanation does not survive scrutiny. The same underlying dispute later produced a criminal prosecution under the Anti-Counterfeit Act, illustrating that a single set of facts can support both a civil claim and a criminal referral at the same time, not one instead of the other.
Passing Off: Protection Without Registration
A business that has built real goodwill in an unregistered mark, or whose mark is well known internationally but not yet registered in Kenya, is not without protection. Section 15A of the Trade Marks Act specifically protects well-known marks entitled to recognition under the Paris Convention or the WTO Agreement, and the common law tort of passing off remains available to anyone with genuine goodwill in a mark, registered or not. To succeed in passing off, a claimant must establish three things: that it has built up goodwill or reputation attached to the mark in the minds of the relevant public, that the defendant has made a misrepresentation, whether deliberate or not, that leads or is likely to lead the public to believe the defendant’s goods or services are those of the claimant, and that the claimant has suffered or is likely to suffer damage as a result. Passing off is a harder case to build than statutory infringement precisely because the claimant carries the full burden of proving goodwill from scratch, usually through sales figures, advertising spend, and market recognition evidence, none of which a registration certificate would have made necessary.
Civil Remedies
A successful claimant, whether under the Act or in passing off, can obtain an injunction restraining further use of the infringing mark, damages or, at the claimant’s election, an account of the infringer’s profits, an order for delivery up or destruction of infringing goods and packaging, and costs. Kenyan courts have also shown a willingness in appropriate cases to look past the surface of a corporate structure where the facts suggest the infringement was not accidental, as the Mabati Rolling Mills case shows, which can affect both the remedy granted and the tone of the judgment. Choosing between damages and an account of profits matters commercially: damages compensate the claimant for its own lost sales and reputational harm, while an account of profits instead strips the infringer of the profit it made from the infringing goods, which can be the larger figure where the infringer sold at scale even if the claimant’s own sales were only modestly affected. A claimant only gets one or the other, not both, so the choice should be made once financial disclosure from the infringer makes the comparison possible, not before.
The Criminal Route: The Anti-Counterfeit Act
Separately from a civil suit, dealing in goods bearing a counterfeit trademark is a criminal offence under the Anti-Counterfeit Act, No. 13 of 2008, which established the Anti-Counterfeit Agency (ACA) with powers to investigate, raid, and seize counterfeit goods, and to refer matters for prosecution. Penalties on conviction include fines and imprisonment. Because the civil and criminal routes are independent of each other, a brand owner does not have to choose between suing for an injunction and reporting the matter to the ACA; both can, and often should, proceed together, since a criminal referral can produce evidence, including seized goods and investigator testimony, that materially strengthens a parallel civil claim.
Building the Evidentiary Record Before Acting
Whichever route is used, the strength of the case depends heavily on evidence assembled before any letter is sent. This means dated proof of the claimant’s own use and registration, evidence of the infringing use including photographs, purchase receipts, and packaging samples, and, where the claim rests on goodwill rather than registration, evidence of advertising spend, sales volumes, and market recognition built up over time. A test purchase, properly documented, is often the single most useful piece of evidence in either a civil or criminal trademark matter, since it fixes a specific date, place, and description of the infringing product in a way that later recollection cannot.
Choosing a Forum and a Strategy
Trademark infringement and passing-off claims are heard by the High Court. A cease and desist letter is usually the sensible first step regardless of which route is ultimately pursued, both because it may resolve the matter without litigation and because a documented, ignored warning strengthens the case for costs and, in an appropriate case, aggravated damages later. Brand owners should also confirm their registration position before acting: a claim built on an unregistered mark that the owner assumed was registered, or on a registration that has lapsed for non-renewal, collapses immediately once the gap is discovered, so a KIPI register check is a five-minute step worth taking before any formal action begins. For the underlying registration and opposition process that determines whether a mark reaches this protected status in the first place, see our guides to trademark registration in Kenya and KIPI trademark opposition. Brand owners protecting a mark across multiple African markets should also see our guide to ARIPO and the Banjul Protocol, since enforcement strategy in Kenya and enforcement strategy in a Banjul member state are not the same exercise.
For advice on trademark infringement claims, passing-off actions, cease and desist strategy, and coordinating civil and Anti-Counterfeit Agency proceedings, consult our intellectual property practice. We advise brand owners across Kenya from our offices at Nextgen Mall, Nairobi.
