REPUBLIC OF KENYA
IN THE HIGH COURT OF KENYA AT NAIROBI
COMMERCIAL & TAX DIVISION
HCCOMMA NO. E084 OF 2023
GTEZ PHARMA (PVT) LIMITED....…....…….……………………APPELLANT
-VERSUS-
HOFFMAN-LA ROCHE AG........................................................…RESPONDENT
(Being an appeal from the ruling of the Eunice Njuguna, Assistant Registrar of Trade Marks delivered on the 10th day of February, 2023 in application KE/T/2010/68191 “GETRYL”).
JUDGMENT
1. The appellant filed an application to register its Trade Mark number KS/T/2010/68191 “GETRYL” before the Registrar of Trade Marks on 19th May, 2010. The application was filed in international class 5 of the Nice Classification of Goods and Services for Purposes of Registration of Marks (NICE Classification), in respect of pharmaceutical and medicinal products. The mark was subsequently approved and published in the Industrial Property Journal of 31st December, 2010.
2. On 21st April, 2011, the respondent filed opposition proceedings against registration of the said Mark on grounds inter alia that it is the proprietor of Trade Mark registration application No. 39454 “KYTRIL” in class 5 as of 10th January, 1992 in Kenya, and that the appellant’s application was in respect to a similar classification of goods in the same class as theirs, that the applicant’s choice of name is intended to cause deception or confusion in the minds of the public since the two marks are phonetically similar, and mistakes may occur in reading a Doctor’s prescription, which are not always clearly written.
3. On receipt of the respondent’s opposition, on 29th June, 2011, the appellant filed a counter statement stating that they entered the Kenyan market in the year 2007, the name “GETRYL” is the only component in its brand which it uses worldwide and has become well-known and is synonymous with the treatment of diabetes, while the respondent’s “KYTRIL” is synonymous for the control of the side effects of cancer treatment i.e. nausea and vomiting. The appellant held view that there is likely to be no confusion in the market arising from concurrent use.
4. The appellant further stated that its Trade Mark relates to a prescription only product, thus no confusion can ever arise in the market. The appellant referred to the provisions of Section 15(2) of the Trade Marks Act and contended that it is not unusual for similar or identical marks to be owned by different applicants provided that the goods or services covered by each mark are distinctly different.
5. It asserted that ever since its penetration of the Kenyan market in the year 2007, there has been no infringement or passing off claim filed and as such, the opposition from the respondent is an afterthought. In addition, the appellant stated that the Trade Mark is registered with the Pharmacy and Poisons Board (PPB) and was published in the Kenya Gazette issue of 30th May, 2008.
6. The respondent filed its statutory declaration sworn on 6th September, 2011 by Mansur Satchu, an Advocate of the High Court of Kenya who averred that the fact that the appellant’s Trade Mark is registered with the PPB has no relevance to these proceedings, since the PPB applies different considerations based on a product’s formula when licensing a product.
7. The appellant also filed a statutory declaration sworn on 31st October, 2011 by Mohammad Hanif Ajari, a Director and Company Secretary of the appellant company who deposed that registration of the drug “GETRYL” with the PPB is relevant, since the PPB website indicates that the class for which the said drug is registered is “ANTI-DIABETES”.
8. Mr. Mohammad averred that duly qualified Pharmacists are trained on the composition of each drug, hence they are unlikely to confuse two drugs that treat completely different diseases. That in any event, should the Pharmacists experience any difficulty in reading the prescription, the normal practice is to call the Doctor who prescribed the medicine since their numbers (telephone) are clearly indicated on the prescription form.
9. On 10th February 2023, the Honourable Assistant Registrar of Trade Marks delivered a ruling on the opposition proceedings where she held that the opposition proceedings were successful, and the appellant’s Trade Mark No. KE/T/2010/68191 “GETRYL” shall not proceed to registration. The respondent was also awarded costs of the opposition proceedings.
10. Dissatisfied by the decision by the Assistant Registrar of Trade Marks, the appellant lodged the instant appeal vide a Memorandum of Appeal dated 8th May, 2023 raising the following grounds of appeal –
i) That the learned Assistant Registrar of Trade Marks erred in law in holding that the appellant’s application for registration number KE/T/2010/68191 “GETRYL” shall not proceed for registration;
ii) That the learned Assistant Registrar of Trade Marks erred in law in sustaining the respondent’s opposition proceedings;
iii) That the learned Assistant Registrar of Trade Marks erred in law in holding that the entry of the appellant’s Trade Mark “GETRYL” into the Register of Trade Marks would offend provisions of Sections 14 and 15 of the Trade Marks Act;
iv) That the learned Assistant Registrar of Trade Marks erred in fact in finding that the Trade Mark “GETRYL” was like the respondent’s Trade Mark “KYTRIL” regardless of the distinction in between the prefix “GE-” in the appellant’s Trade Mark and the prefix “KY-” in the respondent’s Trade Mark, and the suffix “-TRYL” in the appellant’s Mark, and “-TRIL” in the respondent’s Mark;
v) That the learned Assistant Registrar of Trade Marks erred in fact in failing to consider that the appellant’s Trade Mark “GETRYL” applies to medicines used for diabetes treatment, while the respondent’s Trade Mark “KYTRIL” applies to medicines used to minimize the side effects of cancer medication. Thus, the two Trade Marks relate to distinct medicines that do not overlap;
vi) That the learned Assistant Registrar of Trade Marks erred in law and in fact in failing to consider that both Trade Marks applied to distinct prescription medicines treating distinct medical conditions, thus trained Medical Doctors and Pharmacists would not have any confusion as to the medicines;
vii) That the learned Assistant Registrar of Trade Marks erred in law and in fact in failing to consider that the appellant’s have been using their Trade Mark “GETRYL” for 17 years since the year 2006 without any infringement or passing off claim being lodged by the respondent or by any other person, thus demonstrating long honest and concurrent use under Section 15(2) of the Trade Marks Act;
viii) That the learned Assistant Registrar of Trade Marks failed to consider that the appellant’s Trade Mark “GETRYL” falls under Article 6 (1) (A) of the Paris Convention for the Protection of Industrial Property (1967) as domesticated by Section 15A (1) of the Trade Marks Act as a Trade Mark registered in the country of origin and thus (sic) must be registered and protected under the law; and
ix) That the learned Assistant Registrar of Trade Marks failed in all totality to consider the applicable statutory law and case law in her ruling barring the appellant from proceeding with the Trade Mark registration.
11. The appellant’s prayer is for this Court to allow the appeal with costs, set aside the ruling and orders made by the Assistant Registrar of Trade Marks issued on the 10th February, 2023, and direct the Registrar of Trade Marks to allow the appellant’s registration application KE/T/2010/68191 and enter the Trade Mark “GETRYL” into the Register of Trade Marks in favour of the appellant.
12. The instant appeal was canvassed by way of written submissions which were highlighted. The appellant’s submissions were filed on 13th March, 2024 by the law firm of Begi’s Law Offices & Chambers. The respondent neither filed any written submissions nor participated in these proceedings.
13. Dr. Abenga, learned Counsel for the appellant relied on the case of Sony Corporation v Sony Holding Limited [2018] eKLR where the Court quoted with approval the case of Sabel BV v Puma AG, Rudolf Dassler Sport and submitted that the appellant’s Mark “GETRYL” is not sufficiently like the respondent’s Mark “KYTRIL”, and that the only slight similarity between the Marks is the pronunciation of the suffix “…. TRYL” and “TRIL”. He further submitted that the Mark “GETRYL” gives a completely different overall impression as that given by the mark “KYTRIL”. He contended that it is unimaginable that medical professionals such as a Medical Doctor and a Pharmacist, would confuse the prefix “GE” with “KY”.
14. Counsel argued that even if this Court were to find that the suffixes “TRYL” and “TRIL” are similar in pronunciation, the difference in pronunciation and spelling of the prefixes “GE” and “KY”, and the fact that they are prescription medication handled by two different trained medical professionals before the product reaches the consumer, would be determinative of the different overall impression given by the Marks. This Court was reminded that while the goods are similar, being pharmaceutical drugs, they are different as they treat different medical conditions, with “GETRYL” treating diabetes and “KYTRIL” treating the side effects of cancer, which means that two different medical consultants would be prescribing the two different drugs, further minimizing any risk of confusion. To buttress these submissions, Counsel cited the case of Lloyd Schuhfabrik Meyer & Co Gmbtt v Klissen Handel BV, quoted with approval by the Court in the case of Sony Corporation (supra) at paragraph 37.
15. Dr. Abenga stated that in considering the likelihood of confusion, the Court takes into account the ordinary consumer, but in this case, the ordinary consumer would not have any chance of confusion between the medicines as both medicines are prescription only medicines, and not available over the counter. He contended that the foregoing combined with the fact that they treat different medical conditions removes any iota of confusion. Counsel urged this Court to consider the dictum in Reed Executive PLC v Reed Business Information Limited [2004] EWCA Civ 159 quoted with approval in the case of Sony Corporation (supra).
16. Counsel contended that the appellant has a valid claim to the mark “GETRYL”, since it is the largest branded generic pharmaceutical company in Pakistan that has been in the Kenyan market since the year 2007, which is a period of approximately 17 years. He stated that during the said time, the appellant has traded with the mark “GETRYL” without any passing off or infringement claim being lodged against it. In addition, Counsel stated that the respondent neither claims the Mark “GETRYL” nor challenges the appellant’s entitlement to the said Mark. Dr. Abenga referred to the provisions of Section 15(2) of the Trademarks Act and urged this Court to find that there was honest concurrent use of both “GETRYL” and “KYTRIL” to treat different medical conditions, both being prescription only medication.
ANALYSIS AND DETERMINATION
17. This Court’s jurisdiction to entertain an appeal from the decision of the Registrar of Trade Marks in respect to an opposition to registration of a Trade Mark is derived form Section 21(6), (7), (8), (9) & (10) of The Trade Marks Act which states as hereunder –
“6) The decision of the Registrar shall be subject to appeal to the court.
7) An appeal under this section shall be made in the prescribed
manner, and on the appeal the court shall, if required, hear the parties and the Registrar, and shall make an order determining whether, and subject to what conditions or limitations, if any, registration is to be permitted.
8) On the hearing of an appeal under this section any party may,
either in the manner prescribed or by special leave of the court, bring forward further material for the consideration of the court.
9) On an appeal under this section no further grounds of objection to
the registration of a trade mark shall be allowed to be taken by the opponent or the Registrar, other than those so stated by the opponent, except by leave of the court; and, where any further grounds of objection are taken, the applicant shall be entitled to withdraw his application without payment of the costs of the opponent on giving notice as prescribed.
10) On an appeal under this section the court may, after hearing the
Registrar, permit the trade mark proposed to be registered to be
modified in any manner not substantially affecting the identity thereof, but in any such case the trade mark as so modified shall be advertised in the prescribed manner before being registered.”
18. Further, Section 52 of the Trade Marks Act which provides for the Court’s discretion in appeals states that –
“In any appeal from a decision of the Registrar to the court under this Act, the court shall have and exercise the same discretionary powers as under this Act are conferred upon the Registrar.”
19. In the case of Sony Corporation v Sony Holding Limited (supra) Tuiyott J. made the following observation in regard to the extent of the Court’s jurisdiction when dealing with appeals from decisions of the Registrar of Trade Marks -
“It has to be remembered that the Registrar of Trademarks is a specialized quasi-Judicial Tribunal and so the Courts discretionary Jurisdiction must be circumscribed so that some deference is given to the decision of the Tribunal. One object of setting up specialized Tribunals is that they will be constituted by persons who have technical competence in their areas and a good appreciation of matters that come before them. Ordinarily therefore, short of a compelling cause, their appreciation of a dispute ought to be respected.
I accept the proposal by Counsel for the Respondent that the Singaporian Decision of Future Enterprises Pte Ltd vs. McDonald’s Corp [2007]2 SLR 845; 2007 SGCA properly prescribes what my role as an Appellant Court in this matter should be -
“The smorgasbord of trade mark cases which has reached the appellate courts demonstrates the innumerable (and subjectively perceived) similarities and differences that can be conjured up and persuasively articulated by an imaginative and inventive legal mind. Expert and experienced judges, such as Laddie J, have described trade mark infringement as “more a matter of feel than science”. (in Wagamamu Ltd vs. City Centre Restaurants plc [1995] FSR 713 at 732), and Chao Hick Tin JA (as he then was) similarly alluded to it as a matter of “perception” (in The Polo/Lauren subjective nature of assessing similarity and the likelihood of confusion. We agree with the approach that an appellate court should not disturb the findings of fact of a trade mark tribunal unless there is a material error of principle”
In my discretionary jurisdiction, I will only fault the Registrars’ decision if it is demonstrated the Decision was wrong in a material way or that the exercise of Discretion was so unreasonable that no reasonable Tribunal could have arrived at that Decision. To be emphasized as well is that the Appeal is not in the nature of a rehearing where the facts have to be reevaluated in the detail and manner of a Trial Jurisdiction.”
20. In this appeal, I have considered the Memorandum of Appeal, the Record of Appeal and the written submissions made by Counsel for the appellant. The issues that arise for determination are –
i) Whether the appellant’s mark “GETRYL is similar to the respondent’s mark “KYTRIL”; and
ii) Whether the appellant has a valid claim to the mark “GETRYL”.
Whether the appellant’s mark “GETRYL is similar to the respondent’s mark “KYTRIL”
21. The respondent’s case was that the appellant’s registration of the Mark “GETRYL” is intended and/or calculated to cause confusion and deception in the minds of the public, an act which is prohibited by Section 14(1) & 15 (1) of the Trade Marks Act which states that –
“Section 14(1)
“No person shall register as a trade mark or part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice, or would be contrary to law or morality, or any scandalous design.”
“Section 15 (1)
Subject to the provisions of subsection (2), no trade mark shall be registered in respect of any goods or description of goods that is identical with or nearly resembles a mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods, or in respect of services, is identical with or nearly resembles a mark belonging to a different proprietor and already on the register in respect of the same services or description of services.”
22. The provisions of Section 15(1) of the Trade Marks Act is subject to the provisions of Section15(2) of the said Act which states that –
“In case of honest concurrent use, or of other special circumstances which in the opinion of the court or the Registrar make it proper so to do, the court or the Registrar may permit the registration of trade marks that are identical or nearly resemble each other in respect of the same goods or description of goods by more than one proprietor subject to such conditions and limitations, if any, as the court or the Registrar may think it right to impose.”
23. From the above provisions, it is evident that not all identical or marks which nearly resemble each other in respect of the same description of goods are restricted from registration. The Court in the case of Sabel BV v Puma AG Rudolf Dassler Sport, Case C-251/95 cited in Premier Food Industries Limited v Triclover Industries (K) Limited [2021] eKLR gave guidance on what Courts should consider when determining whether a similarity in Marks is likely to cause confusion, by stating the following-
“The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case. That global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The wording of Article 4(1)(b) of the Directive – “…there exists a likelihood of confusion on the part of the public…” – shows that the perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyze its various details.”
24. In determining whether Trade Marks are similar or whether there is any similarity between Trade Marks, the Trade Marks ought to be considered as a whole without dissecting their various components and/or elements. Further, the WIPO Intellectual Property Handbook: Policy Law at page 97 paragraph 2.468 states as follows-
“The second important point when testing the similarity of trademarks is that they should be compared as a whole, and that more weight should be given to common elements which may lead to confusion, while differences overlooked by the average consumer should not be emphasized. Notwithstanding this basic rule of comparing trademarks as a whole and not dividing them into parts, the structure of the signs is important. Common prefixes are normally more important than common suffixes; if two signs are very similar or identical at the beginning, they are more likely to be confused than if the similarity is in their endings. Long words with common or similar beginnings are more likely to be confused than short words with different initial letters.”
25. In this matter, the appellant’s Mark “GETRYL” and the respondent’s Mark “KYTRIL” have some phonetic similarities with respect to the suffixes “TRYL” & “TRIL” but they do not have any visual similarities. This Court therefore finds that in view of the fact that the phonetic similarity between the appellant’s Mark and the respondent’s Mark is in the suffixes of the Marks, and not in the prefixes of the said Marks, the likelihood of confusion of the drugs is very minimal. I note from the record that the parties’ Trade Marks relate to goods in class 5 of the Nice Classification of Goods and Services for Purposes of Registration of Marks (NICE Classification), in respect of pharmaceutical and medicinal products. The appellant however submitted that the actual goods are distinct and used for very different purposes.
26. The appellant stated that its Mark is used and/or is commonly known as an anti-diabetes drug, whereas the respondent’s Mark is a drug used for the control of the side effects of cancer treatments such as nausea and vomiting, a fact which was not disputed by the respondent. In addition, both drugs are prescription medicine, which cannot be sold as over the counter medicine with no prescription. In as much as there may be some phonetic similarities between the appellant’s and the respondent’s Marks, it is my finding that there is no conceptual similarity between them. In addition, chances of the said drugs being confused are very minimal since they are used to treat and/or manage very different ailments attended to by Medical Doctors in different fields of medical practice. To this end, I am guided by the WIPO Intellectual Property Handbook: Policy Law at page 97 paragraph 2.467 where it is stated that –
“Another interesting example of how the category of goods can influence the testing of confusing similarity is to be found in the field of pharmaceuticals. Prescription drugs are normally sold to the consumer (on prescription by doctors) by educated pharmacists, who are less likely to be misled by relatively similar brand names used for medicines for different indications, so the testing of similarity can be more generous. For drugs sold over the counter, the contrary is true. In view of the potentially serious consequences for the uneducated consumer if he buys a wrong product, the testing of similarity must be particularly strict.” (Emphasis added).
27. In this case, both drugs are prescription drugs which means that they can only be sold to a person with a prescription issued by a Medical Doctor. As stated before, the appellant’s drug is commonly used to treat diabetes, whereas the respondent’s drug is used to manage the side effects of cancer treatments. It is highly unlikely to find an oncologist who deals and/or has specialized in cancer diagnosis and treatment, prescribing an anti-diabetes drug, as the common practice would be to refer the patient who has no medical background to a Doctor or specialist who treats diabetes to examine the patient, and thereafter prescribe an anti-diabetes drug.
28. Additionally, since the said drugs are prescription drugs, they can only be dispensed by a qualified Pharmacist upon presentation of a prescription from a Medical Doctor. For this reason, and due to the degree of professionalism, diligence and care expected to be exercised by Doctors and Pharmacists before prescription drugs reach the end consumer (patient), there is no likelihood of confusion of the appellant’s and the respondent’s drugs. In addition, the appellant submitted that they entered the Kenyan Market in the year 2007, and “GETRYL” was registered by the Pharmacy and Poisons Board and published in the Kenya Gazette issue of 30th May, 2008, thus “GETRYL” has been sold in the Kenyan market for over ten years without the appellant being faced with an infringement or passing off claim by either the respondent or any other party.
29. This Court’s finding is that since the medicine “GETRYL” has been in the market since the year 2007, coupled with the fact there has been no claim of confusion of the two drugs for the period that they have concurrently been in the market, this is a proper case to invoke the provisions of Section 15(2) of the Trade Marks Act.
30. In view of the foregoing, this Court finds that the Honourable Assistant Registrar of Trade Marks erred in finding that the appellant’s Mark and that of the respondent are confusingly similar.
Whether the appellant has a valid claim to the Mark “GETRYL”.
31. As was correctly submitted by the appellant’s Counsel, the respondent does not lay any claim to the appellant’s Mark “GETRYL”. It is not disputed that the appellant has traded with the said Mark since the year 2007 without any passing off or infringement claim being lodged against it by the respondent or any other party. Further, the Mark “GETRYL” is registered with the Pharmacy and Poisons Board (PPB) whose website indicates that the class for which the said drug is registered is “ANTI-DIABETES”, and it was published in the Kenya Gazette issue of 30th May, 2008.
32. It is evident from the Record of Appeal that during the opposition proceedings, the appellant vide its statutory declaration sworn on 31st October, 2011 by Mohammad Hanif Ajari, a Director and Company Secretary of the appellant company demonstrated that “GETRYL” made sales of USD 137,786.00 which is equivalent to Kshs.14,185,060.00 in a period of five years between 2007 to 2011. The said issue was not considered and/or addressed by the Assistant Registrar of Trade Marks in her ruling, which in my view was an error since it would have assisted her in determining the extent to which Marks in question, are known, and whether the appellant has a valid claim to the mark “GETRYL”.
33. Having found that there was concurrent use of the parties’ Marks without a claim of infringement and/or passing off being lodged as against the appellant, I am persuaded that the appellant has a valid claim to the mark “GETRYL”.
34. In the result, I find that the appeal herein is merited and is therefore allowed. Costs of the proceedings before the Assistant Registrar of Trade Marks, which form the subject of this Appeal shall be borne by the respondent. The appellant shall bear its own costs of this appeal since the respondent did not participate in the appeal.
It is so ordered.
DATED, SIGNED and DELIVERED at NAIROBI on this 7th day of June 2024. Judgment delivered through Microsoft Teams Online Platform.
NJOKI MWANGI
JUDGE
In the presence of:
No appearance for the appellant
No appearance for the respondent
Ms B. Wokabi – Court Assistant.
IN THE HIGH COURT OF KENYA AT NAIROBI
COMMERCIAL & TAX DIVISION
HCCOMMA NO. E084 OF 2023
GTEZ PHARMA (PVT) LIMITED....…....…….……………………APPELLANT
-VERSUS-
HOFFMAN-LA ROCHE AG........................................................…RESPONDENT
(Being an appeal from the ruling of the Eunice Njuguna, Assistant Registrar of Trade Marks delivered on the 10th day of February, 2023 in application KE/T/2010/68191 “GETRYL”).
JUDGMENT
1. The appellant filed an application to register its Trade Mark number KS/T/2010/68191 “GETRYL” before the Registrar of Trade Marks on 19th May, 2010. The application was filed in international class 5 of the Nice Classification of Goods and Services for Purposes of Registration of Marks (NICE Classification), in respect of pharmaceutical and medicinal products. The mark was subsequently approved and published in the Industrial Property Journal of 31st December, 2010.
2. On 21st April, 2011, the respondent filed opposition proceedings against registration of the said Mark on grounds inter alia that it is the proprietor of Trade Mark registration application No. 39454 “KYTRIL” in class 5 as of 10th January, 1992 in Kenya, and that the appellant’s application was in respect to a similar classification of goods in the same class as theirs, that the applicant’s choice of name is intended to cause deception or confusion in the minds of the public since the two marks are phonetically similar, and mistakes may occur in reading a Doctor’s prescription, which are not always clearly written.
3. On receipt of the respondent’s opposition, on 29th June, 2011, the appellant filed a counter statement stating that they entered the Kenyan market in the year 2007, the name “GETRYL” is the only component in its brand which it uses worldwide and has become well-known and is synonymous with the treatment of diabetes, while the respondent’s “KYTRIL” is synonymous for the control of the side effects of cancer treatment i.e. nausea and vomiting. The appellant held view that there is likely to be no confusion in the market arising from concurrent use.
4. The appellant further stated that its Trade Mark relates to a prescription only product, thus no confusion can ever arise in the market. The appellant referred to the provisions of Section 15(2) of the Trade Marks Act and contended that it is not unusual for similar or identical marks to be owned by different applicants provided that the goods or services covered by each mark are distinctly different.
5. It asserted that ever since its penetration of the Kenyan market in the year 2007, there has been no infringement or passing off claim filed and as such, the opposition from the respondent is an afterthought. In addition, the appellant stated that the Trade Mark is registered with the Pharmacy and Poisons Board (PPB) and was published in the Kenya Gazette issue of 30th May, 2008.
6. The respondent filed its statutory declaration sworn on 6th September, 2011 by Mansur Satchu, an Advocate of the High Court of Kenya who averred that the fact that the appellant’s Trade Mark is registered with the PPB has no relevance to these proceedings, since the PPB applies different considerations based on a product’s formula when licensing a product.
7. The appellant also filed a statutory declaration sworn on 31st October, 2011 by Mohammad Hanif Ajari, a Director and Company Secretary of the appellant company who deposed that registration of the drug “GETRYL” with the PPB is relevant, since the PPB website indicates that the class for which the said drug is registered is “ANTI-DIABETES”.
8. Mr. Mohammad averred that duly qualified Pharmacists are trained on the composition of each drug, hence they are unlikely to confuse two drugs that treat completely different diseases. That in any event, should the Pharmacists experience any difficulty in reading the prescription, the normal practice is to call the Doctor who prescribed the medicine since their numbers (telephone) are clearly indicated on the prescription form.
9. On 10th February 2023, the Honourable Assistant Registrar of Trade Marks delivered a ruling on the opposition proceedings where she held that the opposition proceedings were successful, and the appellant’s Trade Mark No. KE/T/2010/68191 “GETRYL” shall not proceed to registration. The respondent was also awarded costs of the opposition proceedings.
10. Dissatisfied by the decision by the Assistant Registrar of Trade Marks, the appellant lodged the instant appeal vide a Memorandum of Appeal dated 8th May, 2023 raising the following grounds of appeal –
i) That the learned Assistant Registrar of Trade Marks erred in law in holding that the appellant’s application for registration number KE/T/2010/68191 “GETRYL” shall not proceed for registration;
ii) That the learned Assistant Registrar of Trade Marks erred in law in sustaining the respondent’s opposition proceedings;
iii) That the learned Assistant Registrar of Trade Marks erred in law in holding that the entry of the appellant’s Trade Mark “GETRYL” into the Register of Trade Marks would offend provisions of Sections 14 and 15 of the Trade Marks Act;
iv) That the learned Assistant Registrar of Trade Marks erred in fact in finding that the Trade Mark “GETRYL” was like the respondent’s Trade Mark “KYTRIL” regardless of the distinction in between the prefix “GE-” in the appellant’s Trade Mark and the prefix “KY-” in the respondent’s Trade Mark, and the suffix “-TRYL” in the appellant’s Mark, and “-TRIL” in the respondent’s Mark;
v) That the learned Assistant Registrar of Trade Marks erred in fact in failing to consider that the appellant’s Trade Mark “GETRYL” applies to medicines used for diabetes treatment, while the respondent’s Trade Mark “KYTRIL” applies to medicines used to minimize the side effects of cancer medication. Thus, the two Trade Marks relate to distinct medicines that do not overlap;
vi) That the learned Assistant Registrar of Trade Marks erred in law and in fact in failing to consider that both Trade Marks applied to distinct prescription medicines treating distinct medical conditions, thus trained Medical Doctors and Pharmacists would not have any confusion as to the medicines;
vii) That the learned Assistant Registrar of Trade Marks erred in law and in fact in failing to consider that the appellant’s have been using their Trade Mark “GETRYL” for 17 years since the year 2006 without any infringement or passing off claim being lodged by the respondent or by any other person, thus demonstrating long honest and concurrent use under Section 15(2) of the Trade Marks Act;
viii) That the learned Assistant Registrar of Trade Marks failed to consider that the appellant’s Trade Mark “GETRYL” falls under Article 6 (1) (A) of the Paris Convention for the Protection of Industrial Property (1967) as domesticated by Section 15A (1) of the Trade Marks Act as a Trade Mark registered in the country of origin and thus (sic) must be registered and protected under the law; and
ix) That the learned Assistant Registrar of Trade Marks failed in all totality to consider the applicable statutory law and case law in her ruling barring the appellant from proceeding with the Trade Mark registration.
11. The appellant’s prayer is for this Court to allow the appeal with costs, set aside the ruling and orders made by the Assistant Registrar of Trade Marks issued on the 10th February, 2023, and direct the Registrar of Trade Marks to allow the appellant’s registration application KE/T/2010/68191 and enter the Trade Mark “GETRYL” into the Register of Trade Marks in favour of the appellant.
12. The instant appeal was canvassed by way of written submissions which were highlighted. The appellant’s submissions were filed on 13th March, 2024 by the law firm of Begi’s Law Offices & Chambers. The respondent neither filed any written submissions nor participated in these proceedings.
13. Dr. Abenga, learned Counsel for the appellant relied on the case of Sony Corporation v Sony Holding Limited [2018] eKLR where the Court quoted with approval the case of Sabel BV v Puma AG, Rudolf Dassler Sport and submitted that the appellant’s Mark “GETRYL” is not sufficiently like the respondent’s Mark “KYTRIL”, and that the only slight similarity between the Marks is the pronunciation of the suffix “…. TRYL” and “TRIL”. He further submitted that the Mark “GETRYL” gives a completely different overall impression as that given by the mark “KYTRIL”. He contended that it is unimaginable that medical professionals such as a Medical Doctor and a Pharmacist, would confuse the prefix “GE” with “KY”.
14. Counsel argued that even if this Court were to find that the suffixes “TRYL” and “TRIL” are similar in pronunciation, the difference in pronunciation and spelling of the prefixes “GE” and “KY”, and the fact that they are prescription medication handled by two different trained medical professionals before the product reaches the consumer, would be determinative of the different overall impression given by the Marks. This Court was reminded that while the goods are similar, being pharmaceutical drugs, they are different as they treat different medical conditions, with “GETRYL” treating diabetes and “KYTRIL” treating the side effects of cancer, which means that two different medical consultants would be prescribing the two different drugs, further minimizing any risk of confusion. To buttress these submissions, Counsel cited the case of Lloyd Schuhfabrik Meyer & Co Gmbtt v Klissen Handel BV, quoted with approval by the Court in the case of Sony Corporation (supra) at paragraph 37.
15. Dr. Abenga stated that in considering the likelihood of confusion, the Court takes into account the ordinary consumer, but in this case, the ordinary consumer would not have any chance of confusion between the medicines as both medicines are prescription only medicines, and not available over the counter. He contended that the foregoing combined with the fact that they treat different medical conditions removes any iota of confusion. Counsel urged this Court to consider the dictum in Reed Executive PLC v Reed Business Information Limited [2004] EWCA Civ 159 quoted with approval in the case of Sony Corporation (supra).
16. Counsel contended that the appellant has a valid claim to the mark “GETRYL”, since it is the largest branded generic pharmaceutical company in Pakistan that has been in the Kenyan market since the year 2007, which is a period of approximately 17 years. He stated that during the said time, the appellant has traded with the mark “GETRYL” without any passing off or infringement claim being lodged against it. In addition, Counsel stated that the respondent neither claims the Mark “GETRYL” nor challenges the appellant’s entitlement to the said Mark. Dr. Abenga referred to the provisions of Section 15(2) of the Trademarks Act and urged this Court to find that there was honest concurrent use of both “GETRYL” and “KYTRIL” to treat different medical conditions, both being prescription only medication.
ANALYSIS AND DETERMINATION
17. This Court’s jurisdiction to entertain an appeal from the decision of the Registrar of Trade Marks in respect to an opposition to registration of a Trade Mark is derived form Section 21(6), (7), (8), (9) & (10) of The Trade Marks Act which states as hereunder –
“6) The decision of the Registrar shall be subject to appeal to the court.
7) An appeal under this section shall be made in the prescribed
manner, and on the appeal the court shall, if required, hear the parties and the Registrar, and shall make an order determining whether, and subject to what conditions or limitations, if any, registration is to be permitted.
8) On the hearing of an appeal under this section any party may,
either in the manner prescribed or by special leave of the court, bring forward further material for the consideration of the court.
9) On an appeal under this section no further grounds of objection to
the registration of a trade mark shall be allowed to be taken by the opponent or the Registrar, other than those so stated by the opponent, except by leave of the court; and, where any further grounds of objection are taken, the applicant shall be entitled to withdraw his application without payment of the costs of the opponent on giving notice as prescribed.
10) On an appeal under this section the court may, after hearing the
Registrar, permit the trade mark proposed to be registered to be
modified in any manner not substantially affecting the identity thereof, but in any such case the trade mark as so modified shall be advertised in the prescribed manner before being registered.”
18. Further, Section 52 of the Trade Marks Act which provides for the Court’s discretion in appeals states that –
“In any appeal from a decision of the Registrar to the court under this Act, the court shall have and exercise the same discretionary powers as under this Act are conferred upon the Registrar.”
19. In the case of Sony Corporation v Sony Holding Limited (supra) Tuiyott J. made the following observation in regard to the extent of the Court’s jurisdiction when dealing with appeals from decisions of the Registrar of Trade Marks -
“It has to be remembered that the Registrar of Trademarks is a specialized quasi-Judicial Tribunal and so the Courts discretionary Jurisdiction must be circumscribed so that some deference is given to the decision of the Tribunal. One object of setting up specialized Tribunals is that they will be constituted by persons who have technical competence in their areas and a good appreciation of matters that come before them. Ordinarily therefore, short of a compelling cause, their appreciation of a dispute ought to be respected.
I accept the proposal by Counsel for the Respondent that the Singaporian Decision of Future Enterprises Pte Ltd vs. McDonald’s Corp [2007]2 SLR 845; 2007 SGCA properly prescribes what my role as an Appellant Court in this matter should be -
“The smorgasbord of trade mark cases which has reached the appellate courts demonstrates the innumerable (and subjectively perceived) similarities and differences that can be conjured up and persuasively articulated by an imaginative and inventive legal mind. Expert and experienced judges, such as Laddie J, have described trade mark infringement as “more a matter of feel than science”. (in Wagamamu Ltd vs. City Centre Restaurants plc [1995] FSR 713 at 732), and Chao Hick Tin JA (as he then was) similarly alluded to it as a matter of “perception” (in The Polo/Lauren subjective nature of assessing similarity and the likelihood of confusion. We agree with the approach that an appellate court should not disturb the findings of fact of a trade mark tribunal unless there is a material error of principle”
In my discretionary jurisdiction, I will only fault the Registrars’ decision if it is demonstrated the Decision was wrong in a material way or that the exercise of Discretion was so unreasonable that no reasonable Tribunal could have arrived at that Decision. To be emphasized as well is that the Appeal is not in the nature of a rehearing where the facts have to be reevaluated in the detail and manner of a Trial Jurisdiction.”
20. In this appeal, I have considered the Memorandum of Appeal, the Record of Appeal and the written submissions made by Counsel for the appellant. The issues that arise for determination are –
i) Whether the appellant’s mark “GETRYL is similar to the respondent’s mark “KYTRIL”; and
ii) Whether the appellant has a valid claim to the mark “GETRYL”.
Whether the appellant’s mark “GETRYL is similar to the respondent’s mark “KYTRIL”
21. The respondent’s case was that the appellant’s registration of the Mark “GETRYL” is intended and/or calculated to cause confusion and deception in the minds of the public, an act which is prohibited by Section 14(1) & 15 (1) of the Trade Marks Act which states that –
“Section 14(1)
“No person shall register as a trade mark or part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice, or would be contrary to law or morality, or any scandalous design.”
“Section 15 (1)
Subject to the provisions of subsection (2), no trade mark shall be registered in respect of any goods or description of goods that is identical with or nearly resembles a mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods, or in respect of services, is identical with or nearly resembles a mark belonging to a different proprietor and already on the register in respect of the same services or description of services.”
22. The provisions of Section 15(1) of the Trade Marks Act is subject to the provisions of Section15(2) of the said Act which states that –
“In case of honest concurrent use, or of other special circumstances which in the opinion of the court or the Registrar make it proper so to do, the court or the Registrar may permit the registration of trade marks that are identical or nearly resemble each other in respect of the same goods or description of goods by more than one proprietor subject to such conditions and limitations, if any, as the court or the Registrar may think it right to impose.”
23. From the above provisions, it is evident that not all identical or marks which nearly resemble each other in respect of the same description of goods are restricted from registration. The Court in the case of Sabel BV v Puma AG Rudolf Dassler Sport, Case C-251/95 cited in Premier Food Industries Limited v Triclover Industries (K) Limited [2021] eKLR gave guidance on what Courts should consider when determining whether a similarity in Marks is likely to cause confusion, by stating the following-
“The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case. That global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The wording of Article 4(1)(b) of the Directive – “…there exists a likelihood of confusion on the part of the public…” – shows that the perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyze its various details.”
24. In determining whether Trade Marks are similar or whether there is any similarity between Trade Marks, the Trade Marks ought to be considered as a whole without dissecting their various components and/or elements. Further, the WIPO Intellectual Property Handbook: Policy Law at page 97 paragraph 2.468 states as follows-
“The second important point when testing the similarity of trademarks is that they should be compared as a whole, and that more weight should be given to common elements which may lead to confusion, while differences overlooked by the average consumer should not be emphasized. Notwithstanding this basic rule of comparing trademarks as a whole and not dividing them into parts, the structure of the signs is important. Common prefixes are normally more important than common suffixes; if two signs are very similar or identical at the beginning, they are more likely to be confused than if the similarity is in their endings. Long words with common or similar beginnings are more likely to be confused than short words with different initial letters.”
25. In this matter, the appellant’s Mark “GETRYL” and the respondent’s Mark “KYTRIL” have some phonetic similarities with respect to the suffixes “TRYL” & “TRIL” but they do not have any visual similarities. This Court therefore finds that in view of the fact that the phonetic similarity between the appellant’s Mark and the respondent’s Mark is in the suffixes of the Marks, and not in the prefixes of the said Marks, the likelihood of confusion of the drugs is very minimal. I note from the record that the parties’ Trade Marks relate to goods in class 5 of the Nice Classification of Goods and Services for Purposes of Registration of Marks (NICE Classification), in respect of pharmaceutical and medicinal products. The appellant however submitted that the actual goods are distinct and used for very different purposes.
26. The appellant stated that its Mark is used and/or is commonly known as an anti-diabetes drug, whereas the respondent’s Mark is a drug used for the control of the side effects of cancer treatments such as nausea and vomiting, a fact which was not disputed by the respondent. In addition, both drugs are prescription medicine, which cannot be sold as over the counter medicine with no prescription. In as much as there may be some phonetic similarities between the appellant’s and the respondent’s Marks, it is my finding that there is no conceptual similarity between them. In addition, chances of the said drugs being confused are very minimal since they are used to treat and/or manage very different ailments attended to by Medical Doctors in different fields of medical practice. To this end, I am guided by the WIPO Intellectual Property Handbook: Policy Law at page 97 paragraph 2.467 where it is stated that –
“Another interesting example of how the category of goods can influence the testing of confusing similarity is to be found in the field of pharmaceuticals. Prescription drugs are normally sold to the consumer (on prescription by doctors) by educated pharmacists, who are less likely to be misled by relatively similar brand names used for medicines for different indications, so the testing of similarity can be more generous. For drugs sold over the counter, the contrary is true. In view of the potentially serious consequences for the uneducated consumer if he buys a wrong product, the testing of similarity must be particularly strict.” (Emphasis added).
27. In this case, both drugs are prescription drugs which means that they can only be sold to a person with a prescription issued by a Medical Doctor. As stated before, the appellant’s drug is commonly used to treat diabetes, whereas the respondent’s drug is used to manage the side effects of cancer treatments. It is highly unlikely to find an oncologist who deals and/or has specialized in cancer diagnosis and treatment, prescribing an anti-diabetes drug, as the common practice would be to refer the patient who has no medical background to a Doctor or specialist who treats diabetes to examine the patient, and thereafter prescribe an anti-diabetes drug.
28. Additionally, since the said drugs are prescription drugs, they can only be dispensed by a qualified Pharmacist upon presentation of a prescription from a Medical Doctor. For this reason, and due to the degree of professionalism, diligence and care expected to be exercised by Doctors and Pharmacists before prescription drugs reach the end consumer (patient), there is no likelihood of confusion of the appellant’s and the respondent’s drugs. In addition, the appellant submitted that they entered the Kenyan Market in the year 2007, and “GETRYL” was registered by the Pharmacy and Poisons Board and published in the Kenya Gazette issue of 30th May, 2008, thus “GETRYL” has been sold in the Kenyan market for over ten years without the appellant being faced with an infringement or passing off claim by either the respondent or any other party.
29. This Court’s finding is that since the medicine “GETRYL” has been in the market since the year 2007, coupled with the fact there has been no claim of confusion of the two drugs for the period that they have concurrently been in the market, this is a proper case to invoke the provisions of Section 15(2) of the Trade Marks Act.
30. In view of the foregoing, this Court finds that the Honourable Assistant Registrar of Trade Marks erred in finding that the appellant’s Mark and that of the respondent are confusingly similar.
Whether the appellant has a valid claim to the Mark “GETRYL”.
31. As was correctly submitted by the appellant’s Counsel, the respondent does not lay any claim to the appellant’s Mark “GETRYL”. It is not disputed that the appellant has traded with the said Mark since the year 2007 without any passing off or infringement claim being lodged against it by the respondent or any other party. Further, the Mark “GETRYL” is registered with the Pharmacy and Poisons Board (PPB) whose website indicates that the class for which the said drug is registered is “ANTI-DIABETES”, and it was published in the Kenya Gazette issue of 30th May, 2008.
32. It is evident from the Record of Appeal that during the opposition proceedings, the appellant vide its statutory declaration sworn on 31st October, 2011 by Mohammad Hanif Ajari, a Director and Company Secretary of the appellant company demonstrated that “GETRYL” made sales of USD 137,786.00 which is equivalent to Kshs.14,185,060.00 in a period of five years between 2007 to 2011. The said issue was not considered and/or addressed by the Assistant Registrar of Trade Marks in her ruling, which in my view was an error since it would have assisted her in determining the extent to which Marks in question, are known, and whether the appellant has a valid claim to the mark “GETRYL”.
33. Having found that there was concurrent use of the parties’ Marks without a claim of infringement and/or passing off being lodged as against the appellant, I am persuaded that the appellant has a valid claim to the mark “GETRYL”.
34. In the result, I find that the appeal herein is merited and is therefore allowed. Costs of the proceedings before the Assistant Registrar of Trade Marks, which form the subject of this Appeal shall be borne by the respondent. The appellant shall bear its own costs of this appeal since the respondent did not participate in the appeal.
It is so ordered.
DATED, SIGNED and DELIVERED at NAIROBI on this 7th day of June 2024. Judgment delivered through Microsoft Teams Online Platform.
NJOKI MWANGI
JUDGE
In the presence of:
No appearance for the appellant
No appearance for the respondent
Ms B. Wokabi – Court Assistant.