1. The commercial landscape is a fiercely contested terrain where brand identity forms the lifeblood of enterprise. In this arena, a trademark is not merely a label. It is the repository of a business's goodwill and reputation. This dispute presents a classic and fundamental collision between statutory monopoly and equitable common law rights.
2. The Plaintiff and the Defendant are both corporate entities in the Kenyan maize milling sector. They are locked in a bitter legal struggle over the exclusive right to use a single brand name: "PAMOJA". Both rival entities claim absolute proprietorship over this exact name for their respective maize meal products.
3. The Court is thus called upon to resolve a critical dichotomy in intellectual property law. When two rival merchants lay claim to an identical trade mark, which entity should hold sway? Does priority belong to the party who first files for statutory registration, or the party who first uses the mark in the open market? The resolution of this foundational question will dictate the victor in this suit.
Background Facts
4. The factual matrix underpinning this dispute is largely uncontested in its chronology. It is, however, fiercely disputed in its legal implications. The Plaintiff instituted this suit to restrain the Defendant from utilizing the "PAMOJA" trade mark. The Plaintiff anchors its entire claim on a certificate of registration issued by the Kenya Industrial Property Institute (KIPI).
5. The Defendant asserts a radically different narrative. The Defendant contends that it has been milling, packaging, and distributing maize meal under the "PAMOJA" brand long before the Plaintiff approached the registry. The Defendant claims to have built massive goodwill and customer loyalty through years of uninterrupted prior commercial use.
6. The dispute took a significant twist early in the proceedings. The Plaintiff attempted to leverage its statutory registration to summarily shut down the Defendant's production lines. The Plaintiff filed a Notice of Motion seeking interlocutory injunctive reliefs to halt the Defendant's operations pending trial.
7. On 4th November, 2021, this Court (differently constituted) rendered a Ruling on those prayers for injunction. The Court declined to grant the interlocutory orders. The Court observed that the competing claims of statutory registration and prior use presented complex factual controversies. The Court opted to stay its hand, preferring to wait for the full trial and determination of the issues by way of oral evidence.
8. The matter accordingly proceeded to a full hearing. The parties adduced documentary and oral evidence to support their respective claims of priority, goodwill, and market presence.
The Plaintiff’s case
9. The Plaintiff's case is set out in the Plaint. The Plaintiff avers that it is the lawful, registered proprietor of the "PAMOJA" trade mark in Class 30 (flour and preparations made from cereals) for maize meal and related agricultural products.
10. The Plaintiff contends that the registration vests it with the exclusive right to use the mark in Kenya. The Plaintiff relies squarely on Section 7 of the Trade Marks Act (Cap 506). The Plaintiff alleges that the Defendant's continuous use of the identical mark on identical goods is calculated to deceive the public.
11. The Plaintiff asserts that the Defendant's actions amount to blatant trade mark infringement. The Plaintiff further pleads the tort of passing off. The Plaintiff claims that the Defendant is riding on the Plaintiff's registered brand to move its own goods.
12. The Plaintiff claims to have suffered massive financial loss and dilution of its brand identity. Consequently, the Plaintiff seeks the following reliefs in the Plaint:
a) A Permanent injunction restraining the Defendant either by itself, employees, servants, agents and or distributors from distributing, selling, offering for sale, advertising, marketing, stocking, or otherwise dealing with maize meal whatsoever under the brand name “Pamoja Maize Meal” contained in packaging with a similar get up, logo, colour scheme, trademark and pictorial
representation to the Plaintiff’s;
b) An enquiry as to damages or at the Plaintiff’s option an account for profits be made by the Defendant as a result of the passing off and order for payment of any sums found due together with interest thereon at commercial rates to the Plaintiff;
c) Costs of the suit.
The Defendant’s case and Counterclaim
13. The Defendant entered appearance and filed a Statement of Defence and Counter-claim. The Defendant vehemently denies the allegations of infringement and passing off.
14. The Defendant's case is anchored firmly on first in time registration as well as the doctrine of prior use. The Defendant contends that it coined, adopted, and extensively used the "PAMOJA" mark years before the Plaintiff applied for registration. The Defendant asserts that its brand had already acquired immense goodwill in the Kenyan market by the time the Plaintiff registered their trade mark.
15. The Defendant alleges that the Plaintiff's registration was procured in bad faith. The Defendant asserts that the Plaintiff was well aware of the Defendant's established market presence. The Defendant claims the Plaintiff rushed to the registry to unlawfully monopolize a brand it did not create.
16. By way of Counterclaim, the Defendant seeks to expunge the Plaintiff's mark from the register. The Defendant invokes Sections 15 and 35 of the Trade Marks Act. The Defendant argues that a prior registered proprietor has superior title, and the subsequent registration is void.
17. The Defendant seeks the following reliefs in its Counterclaim:
(a). Special Damages to be calculated from 11th March 2020 till the conclusion of this suit for the loss of business.
(b). General Damages for Trade mark Infringement and passing off.
(c). An Order expunging the Plaintiffs 'Pamoja' trade mark No. 89716 from the Registry of Trade marks and costs for expunging to be borne by the Plaintiff.
(d). An Order of Permanent Injunction restraining the Plaintiff either by itself, its directors, officers, servants, employees and/or agents from manufacturing, distributing, offering for sale, advertising, marketing, stocking or otherwise dealing with maize meal whatsoever under the brand name ‘Pamoja Maize Meal' or any other product which is similar to the Defendant's product 'Pamoja Maize Meal'.
(e). An Order that the Plaintiff destroys on oath and in the presence of the Defendant, all goods in its possession bearing the trade name 'Pamoja' or any other product which is similar to the Defendant's product 'Pamoja'.
(f). An Order that the Plaintiff discloses the names, places and addresses of the persons or entitles where it has supplied the infringing goods and further that the Plaintiff recalls the said goods for purposes of destroying them on oath and in default, the Defendant be authorized to get into any premises where the infringing goods are manufactured, stored and/or distributed for purposes of confiscating the same for destruction.
(g). Costs of this suit and the Counterclaim.
(h). Such further or other relief as this honourable court may deem fit.
Final Submissions
18. The Court directed the parties to file written submissions upon the close of the evidentiary hearing. Both parties complied.
19. The Plaintiff's submissions rest heavily on the sanctity of the register. The Plaintiff argues that Kenya is a "first to file" jurisdiction. The Plaintiff cites Section 7 of the Trade Marks Act, emphasizing that a valid registration grants an exclusive statutory right to the proprietor.
20. The Plaintiff relied on the precedent of Pharmaceutical Manufacturing Company v Novelty Manufacturing Ltd HCCC. No 746 of 1998 to argue that its registration establishes a prima facie right that must be protected. The Plaintiff contends that the Defendant slept on its rights by failing to register the mark and cannot now circumvent the statutory framework. The Plaintiff prays for an award of damages.
21. The Defendant's submissions present a robust defence of the common law right of prior use. The Defendant relies on Section 10 of the Trade Marks Act. The Defendant argues that registration does not extinguish the vested rights of a prior continuous user. The Defendant also relies upon Section 14 (1) of the Trade Marks Act, Caps 506, Laws of Kenya. It precludes registration of similar or misleading marks.
22. The Defendant cited the High Court decision in Ezeetile Kenya Ltd v Dg Services Limited (Civil Suit E034 of 2023) [2025] KEHC 12098 (KLR). The case established the ingredients to be proved in a case of trade mark infringement. The Defendant invited the Court to exercise its discretion in awarding damages.
Issues for Determination
23. The Court has carefully evaluated the pleadings, the witness testimonies, and the documentary exhibits. The Court has also taken into consideration the draft issues filed by the Plaintiff. The Court has considered the rival submissions filed as well as the oral highlights by Counsel for the parties. The Court frames five issues for determination as follows:
a) Which of the trade mark registrations was first in time?
b) Whether the Plaintiff's statutory registration of the "PAMOJA" trade mark overrides the Defendant's claim of prior use.
c) Whether the Defendant's actions amount to trade mark infringement and passing off.
d) Whether the Plaintiff's registration of the trade mark was obtained in bad faith and ought to be expunged from the register.
e) What reliefs, if any, the respective parties are entitled to?
Analysis
24. The Court is called upon to determine the issues framed from the pleadings and the facts as presented by the parties. The Court has also considered the relevant laws regarding trade marks. The Court proceeds to consider these issues seriatim.
a) Which of the trade mark registrations was first in time?
25. From the evidence presented by the Defendant its trade mark “Pamoja” was registered on 24th May, 2005 and was valid for a period of ten years. It was registered as trade mark number 57423 under class 30. Upon its expiry it was renewed for a further period of ten years from 24th May, 2015 which expired on 24th May, 2025.
26. On the other hand, the Plaintiff’s trade mark “Pamoja” number 89716 under class 30 was registered on 28th October, 2015. This was effective for a period of ten years which expired on 28th October, 2025.
27. The registration of the Defendant’s trade mark without any doubt was the first in time.
(b) Whether the Plaintiff's statutory registration of the "PAMOJA" trade mark overrides the Defendant's claim of prior use.
28. The Court must determine the status of the two rival claims over the exact same trade mark. This determination must be supported by statute and case law.
29. The law on trademark registration is explicit. Registration of a trade mark confers upon the proprietor the exclusive right to the use of that mark. This is the clear dictate of Section 7(1) of the Trade Marks Act (Cap 506). The subsection provides (underlined emphasis ours):
“Subject to the provisions of this section, and of sections 10 and 11, the registration (whether before or after 1st January, 1957) of a person in Part A of the register as the proprietor of a trade mark if valid gives to that person the exclusive right to the use of the trade mark in relation to those goods or in connection with the provision of any services and without prejudice to the generality of the foregoing that right is infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of permitted use, uses a mark identical with or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade or in connection with the provision of any services in respect of which it is registered, and in such manner as to render the use of the mark likely to— “
30. The Plaintiff holds a certificate of registration. Prima facie, the Plaintiff enjoys this statutory monopoly. However, this statutory monopoly is not an impenetrable shield. It is expressly subject to statutory exceptions.
31. The most prominent of these exceptions is the doctrine of prior use. This is codified under Section 10 of the Trade Marks Act. Section 10 is designed to protect vested common law rights.
32. Section 10 provides:
“10. Saving for vested rights
Nothing in this Act shall entitle the proprietor or a licensee of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date anterior—(a)to the use of the first-mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his; or(b)to the registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his, whichever is the earlier, or to object (on such use being proved) to that person being put on the register for that identical or nearly resembling mark in respect of those goods under subsection (2) of section 15.”
33. The evidentiary record leaves no room for doubt. The Defendant commenced commercial milling and distribution of "PAMOJA" maize meal earlier than the Plaintiff. There is proof of delivery of the packaging bags for the brand Pamoja Maize meal in June and July, 2005. The Defendant produced invoices, delivery notes, and marketing expenditure reports. On a balance of probabilities, the Court is satisfied that the Defendant commenced production under the brand name in 2005. In any event this was prior to the Plaintiff’s registration in 2015.
34. The Plaintiff’s mark was registered on 28th October, 2015. The Plaintiff did not adduce any credible evidence of commercial use prior to its application date.
35. Kenya's trademark system incorporates the "first to file" principle. However, it is heavily tempered by the "first to use" equitable doctrine. A prior user acquires common law rights that simply cannot be defeated by a subsequent registration.
36. The Court is guided by the persuasive jurisprudence of the High Court. In Solpia Kenya Limited v Style Industries Limited & another [2015] KEHC 8101 (KLR), the Court emphatically stated that the rights conferred by registration are not absolute. They are subject to the prior use defence under Section 10 of the Act.
37. Furthermore, the Supreme Court of Kenya has elevated the protection of business goodwill to a constitutional pedestal. In Jovet (Kenya) Limited v Bavaria NV [2025] KESC 27 (KLR), the Supreme Court ruled on the nature of goodwill.
38. The Supreme Court held:
"we hold that goodwill qualifies as property only when it is identifiable, whether independently or alongside other assets, and when a measurable value can be attributed to it. Accordingly, this form of goodwill is entitled to protection under Article 40 of the Constitution".
39. The Defendant had already built substantial and measurable goodwill in the "PAMOJA" brand by the time the Plaintiff approached KIPI in 2019. The Defendant’s witness testified as to a production spanning fifteen years. The Plaintiff cannot use the Trade Marks Act as an instrument to usurp the Defendant's constitutionally protected property. The Defendant's prior use must hold sway.
(c) Whether the Defendant's actions amount to trade mark infringement and passing off.
40. Having found that the registration of a trade mark “Pamoja” in favour of the Plaintiff did not override the Defendant’s prior use, it would follow that the Plaintiff’s use of the mark constituted an infringement and passing off.
41. The Court has considered the decision in Landor LLC and Wpp Luxembourg Gamma Sarl v Wagude Lui t/a Landor & Associates & 2 others [2019] KEHC 10749 (KLR). The conditions to be met in an action for trade mark infringement under Section 7 are:
“a. The Plaintiff is the registered proprietor of the Trade mark;
b. The alleged infringement was a Mark identical which or so nearly resembles that of the registered Mark so as to be likely to deceive or cause confusion in the course of Trade or in connection with the provision of the services in respect of which it is registered;
c. The use of the Mark is without the consent or authority of the Proprietor;
d. The use of Mark is such that it is likely to cause injury or prejudice to the proprietor or licensee of the Trade Mark.”
42. The Court is satisfied that the Plaintiff having failed in the prior registration and use test, its claim has to fail. The Plaintiff's claim for trade mark infringement must collapse entirely. A claim for infringement cannot be sustained against a lawful prior user who is protected by Section 10 of the Trade Marks Act.
43. On the other hand, the Defendant was able to establish though evidence, that it had a validly registered trade mark.
44. On the tort of passing off, the law requires the establishment of the classic trinity test. As enunciated in the seminal case of Reckitt & Colman Products Ltd v Borden Inc [1990] 1 All ER 873, a claimant must prove three elements. These are goodwill, misrepresentation by the defendant, and resultant damage.
45. The Plaintiff has failed to prove passing off. The Plaintiff did not possess prior goodwill to protect. It is the Defendant who established goodwill first in the Kenyan market.
46. Consequently, the Defendant's Counterclaim for passing off against the Plaintiff must succeed. The Plaintiff, by manufacturing and selling maize meal under the "PAMOJA" brand after 2019, engaged in a misrepresentation. This was calculated to deceive the public into believing its goods were those of the Defendant. This action undoubtedly caused damage to the Defendant's established market share.
47. The status of the two rival trade marks is definitively resolved. The Defendant's common law right, anchored on prior continuous use, is superior to the Plaintiff's subsequent statutory registration. The Plaintiff's registration is unlawful and cannot stand on the face of a prior registered trade mark.
48. The Court is satisfied from the evidence presented that the names and class of identification were identical. The wording, packaging and colours are also so similar as to be said to be deceptively the same. It would be difficult for the average shopper in mainstream retail outlets to distinguish the two brands.
(d) Whether the Plaintiff's registration of the trade mark was obtained in bad faith and ought to be expunged from the register.
49. The Court now turns to the issue of expungement. The Defendant seeks to expunge the Plaintiff's mark. Section 15(1) of the Trade Marks Act prohibits the registration of identical or nearly resembling marks in respect of the same goods.
50. The oral evidence revealed a critical twist. The Plaintiff and the Defendant operate in the exact same specialized milling sector. The Defendant's products were widely distributed in major retail outlets since 2017. It is highly improbable that the Plaintiff was unaware of the Defendant's "PAMOJA" brand when it applied for registration in 2019. There was a communication from KIPI addressed to the Plaintiff’s Advocates as early as 6th February, 2019. It alerted them that the registration certificate for tm 89716 “Pamoja” was an error. With this information, the Plaintiff ought not to have continued to legally persue and vex the Defendant. That ought to have triggered an alert on the Plaintiff’s part that it was ridding on someone else’s star. As Miss Shah so eloquently submitted in her opening statement, “usisafirie nyota ya mwenzie”. If you see your competitor’s good selling, you cannot jump and acquire their brand.
51. Applying for registration of a mark with full knowledge of a prior user's established goodwill constitutes bad faith. Fraud on the registration or bad faith is a recognized ground for the expungement of a trade mark. The Plaintiff's registration is incurably tainted by this bad faith. The register must be rectified to reflect the true proprietor.
(e) What reliefs, if any, the respective parties are entitled to?
52. The Court has carefully weighed the evidence, the submissions, and the applicable law. The Plaintiff has failed to establish its case on a balance of probabilities. The Plaintiff's suit is entirely without merit.
53. The Defendant has successfully proved its Counterclaim. The Defendant is the rightful prior user of the "PAMOJA" trade mark. The Plaintiff's registration was obtained in bad faith and violates the Defendant's vested rights.
54. In the final analysis, it is the determination of this Court that the Defendant holds the superior and unassailable right to the trade mark in dispute.
55. The Defendant did not lead any evidence in support of its prayers for special damages. No accounts, financial statements, tax records or audited reports were availed to this Court to show a drop or fluctuation in revenue. The Court relies upon Hahn v. Singh (1985) KLR 716.
56. On general damages, the Court notes that the trade marks have expired. The Plaintiff’s trade mark expired on 24th May, 2025 while that of the Defendant expired on 28th October, 2025. In this suit the Defendant elected to plead for general damages. It did not opt to prove liability then seek an order for inquiry as to damages. That is still in order in determination of awards in cases of trademark infringement and passing off.
57. General damages are assessed at the discretion of this Court. The Defendant’s evidence was that it took action to discontinue production awaiting the determination of this suit. In the meantime, the Plaintiff has used the trade mark for at least ten years. The Defendant did not refer this Court to authorities sufficient to lead the Court in assessing damages. It left the issue to be determined by the Court.
58. In Ezeetile Kenya Ltd v Dg Services Limited [2025] KEHC 12098 (KLR) general damages were assessed at Kshs. 3,000,000/=. In Highchem Marketing Limited v Nextgen Pharmaceuticals Kenya [2025] KEHC 16212 (KLR) the Court awarded Kshs. 5,000,000/=. In Strategic Industries Limited v Solpia Kenya Limited [2019] KEHC 10209 (KLR) the award was Kshs. 3,000,000/=.
59. The Court has taken into consideration that this was a claim arising out of the manufacturing and retail of a fast-moving commodity over a prolonged period of time. The Court has also considered that the Defendant stopped production during the pendency of this suit. Hence, it was the Plaintiff who was enjoying the monopoly in production and distribution using the contested trade mark.
60. The Court has also taken note that it is the Defendant who was the wronged party, yet the Plaintiff went all out to seek to shut it out from this market. The Court in making this award notes that the Plaintiff must have derived substantial profits while making use of a trade mark that belonged to another. An award of Kshs. 3,000,000/- would be a mere slap on the wrist of the Plaintiff. On the other hand, the Court is of the considered opinion that a sum of Kshs. 10,000,000/= would adequately compensate the Defendant in general damages. The Court awards general damages of Kshs. 10,000,000/=.
61. The Plaintiff’s trade mark ought to be expunged from the Register of trade marks as the two similar marks cannot co-exist.
62. The Defendant having proved its Counter claim is deserving of the injunction sought.
63. The Court having noted that the Plaintiff’s trade mark has expired, the Defendant would only be entitled to a prayer for discovery and destruction of such branded goods, if there is evidence of continuous infringement and passing off. As no such evidence has been led after the expiry of the Plaintiff’s trade mark, the prayers are declined.
64. As to cost the same ordinarily follow the event and are awarded at the discretion of this Court. The Defendant as the successful party is awarded the costs of the Plaintiff’s suit as well as the Counter-claim.
Determination
65. Accordingly, the Plaintiff’s suit fails while the Defendant’s Counter-claim succeeds. The Court HEREBY enters Judgment in the following terms:
(a) The Plaintiff's suit is HEREBY dismissed in its entirety for lack of merit.
(b) Judgment is HEREBY entered in favour of the Defendant as against the Plaintiff as prayed for in the Counter-claim as follows:
(c) General Damages for trade mark Infringement and passing off are HEREBY assessed at Kenya Shillings 10,000,000/=.
(d) An Order is HEREBY issued expunging the Plaintiff’s 'Pamoja' trade mark No. 89716 from the Registry of Trade marks and the costs for expunging (if any) to be borne by the Plaintiff.
(e) An Order of a Permanent Injunction is HEREBY issued restraining the Plaintiff either by itself, its directors, officers, servants, employees and/or agents from manufacturing, distributing, offering for sale, advertising, marketing, stocking or otherwise dealing with maize meal whatsoever under the brand name ‘Pamoja Maize Meal' or any other product which is similar to the Defendant's product 'Pamoja Maize Meal'.
(f) The costs of the Plaintiff’s suit are HEREBY awarded to the Defendant.
(g) The costs of the Defendant’s Counter-claim are HEREBY awarded to the Defendant.
(h) Prayers (c) (f) and (g) to attract interest at Court rates from the date of Judgment until payment in full.
66. It is so ordered.
DATED, SIGNED AND DELIVERED AT MILIMANI THIS 15TH DAY OF SEPTEMBER, 2026
NJOROGE BENJAMIN K.
JUDGE
In the presence of:
Mr Mburu holding brief for Mr. Gachie Mwanza for the Plaintiff.
Miss Karishma Shah for the Defendant.
Mr. John Paul - Court Assistant.
2. The Plaintiff and the Defendant are both corporate entities in the Kenyan maize milling sector. They are locked in a bitter legal struggle over the exclusive right to use a single brand name: "PAMOJA". Both rival entities claim absolute proprietorship over this exact name for their respective maize meal products.
3. The Court is thus called upon to resolve a critical dichotomy in intellectual property law. When two rival merchants lay claim to an identical trade mark, which entity should hold sway? Does priority belong to the party who first files for statutory registration, or the party who first uses the mark in the open market? The resolution of this foundational question will dictate the victor in this suit.
Background Facts
4. The factual matrix underpinning this dispute is largely uncontested in its chronology. It is, however, fiercely disputed in its legal implications. The Plaintiff instituted this suit to restrain the Defendant from utilizing the "PAMOJA" trade mark. The Plaintiff anchors its entire claim on a certificate of registration issued by the Kenya Industrial Property Institute (KIPI).
5. The Defendant asserts a radically different narrative. The Defendant contends that it has been milling, packaging, and distributing maize meal under the "PAMOJA" brand long before the Plaintiff approached the registry. The Defendant claims to have built massive goodwill and customer loyalty through years of uninterrupted prior commercial use.
6. The dispute took a significant twist early in the proceedings. The Plaintiff attempted to leverage its statutory registration to summarily shut down the Defendant's production lines. The Plaintiff filed a Notice of Motion seeking interlocutory injunctive reliefs to halt the Defendant's operations pending trial.
7. On 4th November, 2021, this Court (differently constituted) rendered a Ruling on those prayers for injunction. The Court declined to grant the interlocutory orders. The Court observed that the competing claims of statutory registration and prior use presented complex factual controversies. The Court opted to stay its hand, preferring to wait for the full trial and determination of the issues by way of oral evidence.
8. The matter accordingly proceeded to a full hearing. The parties adduced documentary and oral evidence to support their respective claims of priority, goodwill, and market presence.
The Plaintiff’s case
9. The Plaintiff's case is set out in the Plaint. The Plaintiff avers that it is the lawful, registered proprietor of the "PAMOJA" trade mark in Class 30 (flour and preparations made from cereals) for maize meal and related agricultural products.
10. The Plaintiff contends that the registration vests it with the exclusive right to use the mark in Kenya. The Plaintiff relies squarely on Section 7 of the Trade Marks Act (Cap 506). The Plaintiff alleges that the Defendant's continuous use of the identical mark on identical goods is calculated to deceive the public.
11. The Plaintiff asserts that the Defendant's actions amount to blatant trade mark infringement. The Plaintiff further pleads the tort of passing off. The Plaintiff claims that the Defendant is riding on the Plaintiff's registered brand to move its own goods.
12. The Plaintiff claims to have suffered massive financial loss and dilution of its brand identity. Consequently, the Plaintiff seeks the following reliefs in the Plaint:
a) A Permanent injunction restraining the Defendant either by itself, employees, servants, agents and or distributors from distributing, selling, offering for sale, advertising, marketing, stocking, or otherwise dealing with maize meal whatsoever under the brand name “Pamoja Maize Meal” contained in packaging with a similar get up, logo, colour scheme, trademark and pictorial
representation to the Plaintiff’s;
b) An enquiry as to damages or at the Plaintiff’s option an account for profits be made by the Defendant as a result of the passing off and order for payment of any sums found due together with interest thereon at commercial rates to the Plaintiff;
c) Costs of the suit.
The Defendant’s case and Counterclaim
13. The Defendant entered appearance and filed a Statement of Defence and Counter-claim. The Defendant vehemently denies the allegations of infringement and passing off.
14. The Defendant's case is anchored firmly on first in time registration as well as the doctrine of prior use. The Defendant contends that it coined, adopted, and extensively used the "PAMOJA" mark years before the Plaintiff applied for registration. The Defendant asserts that its brand had already acquired immense goodwill in the Kenyan market by the time the Plaintiff registered their trade mark.
15. The Defendant alleges that the Plaintiff's registration was procured in bad faith. The Defendant asserts that the Plaintiff was well aware of the Defendant's established market presence. The Defendant claims the Plaintiff rushed to the registry to unlawfully monopolize a brand it did not create.
16. By way of Counterclaim, the Defendant seeks to expunge the Plaintiff's mark from the register. The Defendant invokes Sections 15 and 35 of the Trade Marks Act. The Defendant argues that a prior registered proprietor has superior title, and the subsequent registration is void.
17. The Defendant seeks the following reliefs in its Counterclaim:
(a). Special Damages to be calculated from 11th March 2020 till the conclusion of this suit for the loss of business.
(b). General Damages for Trade mark Infringement and passing off.
(c). An Order expunging the Plaintiffs 'Pamoja' trade mark No. 89716 from the Registry of Trade marks and costs for expunging to be borne by the Plaintiff.
(d). An Order of Permanent Injunction restraining the Plaintiff either by itself, its directors, officers, servants, employees and/or agents from manufacturing, distributing, offering for sale, advertising, marketing, stocking or otherwise dealing with maize meal whatsoever under the brand name ‘Pamoja Maize Meal' or any other product which is similar to the Defendant's product 'Pamoja Maize Meal'.
(e). An Order that the Plaintiff destroys on oath and in the presence of the Defendant, all goods in its possession bearing the trade name 'Pamoja' or any other product which is similar to the Defendant's product 'Pamoja'.
(f). An Order that the Plaintiff discloses the names, places and addresses of the persons or entitles where it has supplied the infringing goods and further that the Plaintiff recalls the said goods for purposes of destroying them on oath and in default, the Defendant be authorized to get into any premises where the infringing goods are manufactured, stored and/or distributed for purposes of confiscating the same for destruction.
(g). Costs of this suit and the Counterclaim.
(h). Such further or other relief as this honourable court may deem fit.
Final Submissions
18. The Court directed the parties to file written submissions upon the close of the evidentiary hearing. Both parties complied.
19. The Plaintiff's submissions rest heavily on the sanctity of the register. The Plaintiff argues that Kenya is a "first to file" jurisdiction. The Plaintiff cites Section 7 of the Trade Marks Act, emphasizing that a valid registration grants an exclusive statutory right to the proprietor.
20. The Plaintiff relied on the precedent of Pharmaceutical Manufacturing Company v Novelty Manufacturing Ltd HCCC. No 746 of 1998 to argue that its registration establishes a prima facie right that must be protected. The Plaintiff contends that the Defendant slept on its rights by failing to register the mark and cannot now circumvent the statutory framework. The Plaintiff prays for an award of damages.
21. The Defendant's submissions present a robust defence of the common law right of prior use. The Defendant relies on Section 10 of the Trade Marks Act. The Defendant argues that registration does not extinguish the vested rights of a prior continuous user. The Defendant also relies upon Section 14 (1) of the Trade Marks Act, Caps 506, Laws of Kenya. It precludes registration of similar or misleading marks.
22. The Defendant cited the High Court decision in Ezeetile Kenya Ltd v Dg Services Limited (Civil Suit E034 of 2023) [2025] KEHC 12098 (KLR). The case established the ingredients to be proved in a case of trade mark infringement. The Defendant invited the Court to exercise its discretion in awarding damages.
Issues for Determination
23. The Court has carefully evaluated the pleadings, the witness testimonies, and the documentary exhibits. The Court has also taken into consideration the draft issues filed by the Plaintiff. The Court has considered the rival submissions filed as well as the oral highlights by Counsel for the parties. The Court frames five issues for determination as follows:
a) Which of the trade mark registrations was first in time?
b) Whether the Plaintiff's statutory registration of the "PAMOJA" trade mark overrides the Defendant's claim of prior use.
c) Whether the Defendant's actions amount to trade mark infringement and passing off.
d) Whether the Plaintiff's registration of the trade mark was obtained in bad faith and ought to be expunged from the register.
e) What reliefs, if any, the respective parties are entitled to?
Analysis
24. The Court is called upon to determine the issues framed from the pleadings and the facts as presented by the parties. The Court has also considered the relevant laws regarding trade marks. The Court proceeds to consider these issues seriatim.
a) Which of the trade mark registrations was first in time?
25. From the evidence presented by the Defendant its trade mark “Pamoja” was registered on 24th May, 2005 and was valid for a period of ten years. It was registered as trade mark number 57423 under class 30. Upon its expiry it was renewed for a further period of ten years from 24th May, 2015 which expired on 24th May, 2025.
26. On the other hand, the Plaintiff’s trade mark “Pamoja” number 89716 under class 30 was registered on 28th October, 2015. This was effective for a period of ten years which expired on 28th October, 2025.
27. The registration of the Defendant’s trade mark without any doubt was the first in time.
(b) Whether the Plaintiff's statutory registration of the "PAMOJA" trade mark overrides the Defendant's claim of prior use.
28. The Court must determine the status of the two rival claims over the exact same trade mark. This determination must be supported by statute and case law.
29. The law on trademark registration is explicit. Registration of a trade mark confers upon the proprietor the exclusive right to the use of that mark. This is the clear dictate of Section 7(1) of the Trade Marks Act (Cap 506). The subsection provides (underlined emphasis ours):
“Subject to the provisions of this section, and of sections 10 and 11, the registration (whether before or after 1st January, 1957) of a person in Part A of the register as the proprietor of a trade mark if valid gives to that person the exclusive right to the use of the trade mark in relation to those goods or in connection with the provision of any services and without prejudice to the generality of the foregoing that right is infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of permitted use, uses a mark identical with or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade or in connection with the provision of any services in respect of which it is registered, and in such manner as to render the use of the mark likely to— “
30. The Plaintiff holds a certificate of registration. Prima facie, the Plaintiff enjoys this statutory monopoly. However, this statutory monopoly is not an impenetrable shield. It is expressly subject to statutory exceptions.
31. The most prominent of these exceptions is the doctrine of prior use. This is codified under Section 10 of the Trade Marks Act. Section 10 is designed to protect vested common law rights.
32. Section 10 provides:
“10. Saving for vested rights
Nothing in this Act shall entitle the proprietor or a licensee of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date anterior—(a)to the use of the first-mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his; or(b)to the registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his, whichever is the earlier, or to object (on such use being proved) to that person being put on the register for that identical or nearly resembling mark in respect of those goods under subsection (2) of section 15.”
33. The evidentiary record leaves no room for doubt. The Defendant commenced commercial milling and distribution of "PAMOJA" maize meal earlier than the Plaintiff. There is proof of delivery of the packaging bags for the brand Pamoja Maize meal in June and July, 2005. The Defendant produced invoices, delivery notes, and marketing expenditure reports. On a balance of probabilities, the Court is satisfied that the Defendant commenced production under the brand name in 2005. In any event this was prior to the Plaintiff’s registration in 2015.
34. The Plaintiff’s mark was registered on 28th October, 2015. The Plaintiff did not adduce any credible evidence of commercial use prior to its application date.
35. Kenya's trademark system incorporates the "first to file" principle. However, it is heavily tempered by the "first to use" equitable doctrine. A prior user acquires common law rights that simply cannot be defeated by a subsequent registration.
36. The Court is guided by the persuasive jurisprudence of the High Court. In Solpia Kenya Limited v Style Industries Limited & another [2015] KEHC 8101 (KLR), the Court emphatically stated that the rights conferred by registration are not absolute. They are subject to the prior use defence under Section 10 of the Act.
37. Furthermore, the Supreme Court of Kenya has elevated the protection of business goodwill to a constitutional pedestal. In Jovet (Kenya) Limited v Bavaria NV [2025] KESC 27 (KLR), the Supreme Court ruled on the nature of goodwill.
38. The Supreme Court held:
"we hold that goodwill qualifies as property only when it is identifiable, whether independently or alongside other assets, and when a measurable value can be attributed to it. Accordingly, this form of goodwill is entitled to protection under Article 40 of the Constitution".
39. The Defendant had already built substantial and measurable goodwill in the "PAMOJA" brand by the time the Plaintiff approached KIPI in 2019. The Defendant’s witness testified as to a production spanning fifteen years. The Plaintiff cannot use the Trade Marks Act as an instrument to usurp the Defendant's constitutionally protected property. The Defendant's prior use must hold sway.
(c) Whether the Defendant's actions amount to trade mark infringement and passing off.
40. Having found that the registration of a trade mark “Pamoja” in favour of the Plaintiff did not override the Defendant’s prior use, it would follow that the Plaintiff’s use of the mark constituted an infringement and passing off.
41. The Court has considered the decision in Landor LLC and Wpp Luxembourg Gamma Sarl v Wagude Lui t/a Landor & Associates & 2 others [2019] KEHC 10749 (KLR). The conditions to be met in an action for trade mark infringement under Section 7 are:
“a. The Plaintiff is the registered proprietor of the Trade mark;
b. The alleged infringement was a Mark identical which or so nearly resembles that of the registered Mark so as to be likely to deceive or cause confusion in the course of Trade or in connection with the provision of the services in respect of which it is registered;
c. The use of the Mark is without the consent or authority of the Proprietor;
d. The use of Mark is such that it is likely to cause injury or prejudice to the proprietor or licensee of the Trade Mark.”
42. The Court is satisfied that the Plaintiff having failed in the prior registration and use test, its claim has to fail. The Plaintiff's claim for trade mark infringement must collapse entirely. A claim for infringement cannot be sustained against a lawful prior user who is protected by Section 10 of the Trade Marks Act.
43. On the other hand, the Defendant was able to establish though evidence, that it had a validly registered trade mark.
44. On the tort of passing off, the law requires the establishment of the classic trinity test. As enunciated in the seminal case of Reckitt & Colman Products Ltd v Borden Inc [1990] 1 All ER 873, a claimant must prove three elements. These are goodwill, misrepresentation by the defendant, and resultant damage.
45. The Plaintiff has failed to prove passing off. The Plaintiff did not possess prior goodwill to protect. It is the Defendant who established goodwill first in the Kenyan market.
46. Consequently, the Defendant's Counterclaim for passing off against the Plaintiff must succeed. The Plaintiff, by manufacturing and selling maize meal under the "PAMOJA" brand after 2019, engaged in a misrepresentation. This was calculated to deceive the public into believing its goods were those of the Defendant. This action undoubtedly caused damage to the Defendant's established market share.
47. The status of the two rival trade marks is definitively resolved. The Defendant's common law right, anchored on prior continuous use, is superior to the Plaintiff's subsequent statutory registration. The Plaintiff's registration is unlawful and cannot stand on the face of a prior registered trade mark.
48. The Court is satisfied from the evidence presented that the names and class of identification were identical. The wording, packaging and colours are also so similar as to be said to be deceptively the same. It would be difficult for the average shopper in mainstream retail outlets to distinguish the two brands.
(d) Whether the Plaintiff's registration of the trade mark was obtained in bad faith and ought to be expunged from the register.
49. The Court now turns to the issue of expungement. The Defendant seeks to expunge the Plaintiff's mark. Section 15(1) of the Trade Marks Act prohibits the registration of identical or nearly resembling marks in respect of the same goods.
50. The oral evidence revealed a critical twist. The Plaintiff and the Defendant operate in the exact same specialized milling sector. The Defendant's products were widely distributed in major retail outlets since 2017. It is highly improbable that the Plaintiff was unaware of the Defendant's "PAMOJA" brand when it applied for registration in 2019. There was a communication from KIPI addressed to the Plaintiff’s Advocates as early as 6th February, 2019. It alerted them that the registration certificate for tm 89716 “Pamoja” was an error. With this information, the Plaintiff ought not to have continued to legally persue and vex the Defendant. That ought to have triggered an alert on the Plaintiff’s part that it was ridding on someone else’s star. As Miss Shah so eloquently submitted in her opening statement, “usisafirie nyota ya mwenzie”. If you see your competitor’s good selling, you cannot jump and acquire their brand.
51. Applying for registration of a mark with full knowledge of a prior user's established goodwill constitutes bad faith. Fraud on the registration or bad faith is a recognized ground for the expungement of a trade mark. The Plaintiff's registration is incurably tainted by this bad faith. The register must be rectified to reflect the true proprietor.
(e) What reliefs, if any, the respective parties are entitled to?
52. The Court has carefully weighed the evidence, the submissions, and the applicable law. The Plaintiff has failed to establish its case on a balance of probabilities. The Plaintiff's suit is entirely without merit.
53. The Defendant has successfully proved its Counterclaim. The Defendant is the rightful prior user of the "PAMOJA" trade mark. The Plaintiff's registration was obtained in bad faith and violates the Defendant's vested rights.
54. In the final analysis, it is the determination of this Court that the Defendant holds the superior and unassailable right to the trade mark in dispute.
55. The Defendant did not lead any evidence in support of its prayers for special damages. No accounts, financial statements, tax records or audited reports were availed to this Court to show a drop or fluctuation in revenue. The Court relies upon Hahn v. Singh (1985) KLR 716.
56. On general damages, the Court notes that the trade marks have expired. The Plaintiff’s trade mark expired on 24th May, 2025 while that of the Defendant expired on 28th October, 2025. In this suit the Defendant elected to plead for general damages. It did not opt to prove liability then seek an order for inquiry as to damages. That is still in order in determination of awards in cases of trademark infringement and passing off.
57. General damages are assessed at the discretion of this Court. The Defendant’s evidence was that it took action to discontinue production awaiting the determination of this suit. In the meantime, the Plaintiff has used the trade mark for at least ten years. The Defendant did not refer this Court to authorities sufficient to lead the Court in assessing damages. It left the issue to be determined by the Court.
58. In Ezeetile Kenya Ltd v Dg Services Limited [2025] KEHC 12098 (KLR) general damages were assessed at Kshs. 3,000,000/=. In Highchem Marketing Limited v Nextgen Pharmaceuticals Kenya [2025] KEHC 16212 (KLR) the Court awarded Kshs. 5,000,000/=. In Strategic Industries Limited v Solpia Kenya Limited [2019] KEHC 10209 (KLR) the award was Kshs. 3,000,000/=.
59. The Court has taken into consideration that this was a claim arising out of the manufacturing and retail of a fast-moving commodity over a prolonged period of time. The Court has also considered that the Defendant stopped production during the pendency of this suit. Hence, it was the Plaintiff who was enjoying the monopoly in production and distribution using the contested trade mark.
60. The Court has also taken note that it is the Defendant who was the wronged party, yet the Plaintiff went all out to seek to shut it out from this market. The Court in making this award notes that the Plaintiff must have derived substantial profits while making use of a trade mark that belonged to another. An award of Kshs. 3,000,000/- would be a mere slap on the wrist of the Plaintiff. On the other hand, the Court is of the considered opinion that a sum of Kshs. 10,000,000/= would adequately compensate the Defendant in general damages. The Court awards general damages of Kshs. 10,000,000/=.
61. The Plaintiff’s trade mark ought to be expunged from the Register of trade marks as the two similar marks cannot co-exist.
62. The Defendant having proved its Counter claim is deserving of the injunction sought.
63. The Court having noted that the Plaintiff’s trade mark has expired, the Defendant would only be entitled to a prayer for discovery and destruction of such branded goods, if there is evidence of continuous infringement and passing off. As no such evidence has been led after the expiry of the Plaintiff’s trade mark, the prayers are declined.
64. As to cost the same ordinarily follow the event and are awarded at the discretion of this Court. The Defendant as the successful party is awarded the costs of the Plaintiff’s suit as well as the Counter-claim.
Determination
65. Accordingly, the Plaintiff’s suit fails while the Defendant’s Counter-claim succeeds. The Court HEREBY enters Judgment in the following terms:
(a) The Plaintiff's suit is HEREBY dismissed in its entirety for lack of merit.
(b) Judgment is HEREBY entered in favour of the Defendant as against the Plaintiff as prayed for in the Counter-claim as follows:
(c) General Damages for trade mark Infringement and passing off are HEREBY assessed at Kenya Shillings 10,000,000/=.
(d) An Order is HEREBY issued expunging the Plaintiff’s 'Pamoja' trade mark No. 89716 from the Registry of Trade marks and the costs for expunging (if any) to be borne by the Plaintiff.
(e) An Order of a Permanent Injunction is HEREBY issued restraining the Plaintiff either by itself, its directors, officers, servants, employees and/or agents from manufacturing, distributing, offering for sale, advertising, marketing, stocking or otherwise dealing with maize meal whatsoever under the brand name ‘Pamoja Maize Meal' or any other product which is similar to the Defendant's product 'Pamoja Maize Meal'.
(f) The costs of the Plaintiff’s suit are HEREBY awarded to the Defendant.
(g) The costs of the Defendant’s Counter-claim are HEREBY awarded to the Defendant.
(h) Prayers (c) (f) and (g) to attract interest at Court rates from the date of Judgment until payment in full.
66. It is so ordered.
DATED, SIGNED AND DELIVERED AT MILIMANI THIS 15TH DAY OF SEPTEMBER, 2026
NJOROGE BENJAMIN K.
JUDGE
In the presence of:
Mr Mburu holding brief for Mr. Gachie Mwanza for the Plaintiff.
Miss Karishma Shah for the Defendant.
Mr. John Paul - Court Assistant.