Introduction and Background
1. This is a determination of the appeal dated 4th September 2023 against the decision of the Registrar of Trade Marks (the Registrar), delivered in expungement proceedings relating to trade mark number 104905 “LIVESCORE” in class 35 (the mark).
2. The Registrar disallowed the appellant’s application for expungement of the mark from the register, giving rise to the present appeal. The respondent on the other hand is the registered proprietor of the trade mark in Kenya. The main grounds of appeal against the decision of the Registrar are that:
i. The Assistant Registrar failed to sufficiently consider the evidence provided by the appellant in the statutory declarations dated 1st April 2021 and 21st January 2022.
ii. The Assistant Registrar misdirected herself in law by concluding that the appellant did not qualify as an "aggrieved person" in the expungement proceedings.
iii. The Registrar erred by holding that the respondent had a valid and legal claim to the conflicting trademark in Kenya prior to applying for its registration.
iv. The Registrar erred by not finding that the respondent’s mark is confusingly or deceptively similar to the appellant’s LIVESCORE trademark, and thus is not entitled to protection.
v. The Registrar misdirected herself by disregarding the evidence submitted by the appellant to prove that its LIVESCORE trademark is a well-known mark in Kenya.
3. The appeal is opposed. The respondent contends that it was the appellant’s duty to prove that the respondent’s mark should not remain on the register and that the burden should not be shifted. The respondent further confirms that the Registrar considered the evidence presented and concluded that the appellants had not provided sufficient evidence to discharge its burden of proof under Section 14 of the Trade Marks Act (the Act).
4. The respondent agrees with the Registrar that no evidence was provided by the appellant to prove that it owned a well-known mark, LIVESCORE, for services under class 35, in Kenya. The respondent also takes issue with the appellant for not having provided evidence of prior use of the mark in Kenya prior to the registration of the respondent’s mark. According to the respondent, only a party with a better claim that itself could challenge its mark, and the appellant had not proved that it had such a claim, as correctly held by the Registrar.
Analysis and Determination
5. The appeal was canvased by way of written submissions which I have carefully considered alongside the record, pleadings, responses and caselaw filed by the parties. The grounds of appeal can be consolidated into three main grounds and that is:
i. Whether the appellants were “aggrieved persons” under Section 35(1) of the Act;
ii. Whether “LIVESCORE” is a well-known mark in Kenya under Section 15A of the Act;
iii. Whether the proprietor had a valid claim to proprietorship under Section 20(1) of the Act.
i. Whether the appellants were “aggrieved persons” under Section 35(1) of the Act:
6. The appellant contends that it qualifies as an aggrieved person for purposes of the expungement proceedings. The respondent, on the other hand, maintains that the appellant does not meet this threshold, having failed to provide evidence of holding a well-known mark registered in Kenya. Consequently, the respondent argues that the appellant cannot be considered an aggrieved person.
7. The Trade Marks Act employs the phrase “any person aggrieved” to define those eligible to seek rectification or removal of a trade mark from the register. Section 35(1) of the Act provides:
“Any person aggrieved by the non-insertion in or omission from the register of an entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner… and the court or the Registrar may make such order for making, expunging or varying the entry as the court or the Registrar may think fit.”
8. Put simply, a party seeking cancellation or rectification of a trade mark registration must establish that they are an “aggrieved person” within the meaning of Section 35. This is essentially a question of locus standi; that is, whether the party has standing to bring the action. Although the Act does not define the term, courts have developed a fact-sensitive and expansive interpretation of it. The central inquiry is whether an applicant has a sufficient and legitimate interest in the registration status of the trade mark.
9. In Saudia Arabian Airlines Corporation V Saudia Kenya Enterprises Limited, [1986] eKLR, the Court of Appeal undertook a detailed analysis of English authorities and formulated the following guiding principles on who may be considered an aggrieved person:
i. no exact exhaustive definition is possible;
ii. reasons of public policy make it undesirable to narrow unduly the definition because it is a public mischief that there should be on the register a trade mark that should not be there;
iii. common informers and strangers or officious interferers are excluded because they have no interest at all in the register being correct;
iv. anyone in the same trade and dealing in the same articles as one who has wrongfully registered a trade mark is prima facie an aggrieved person;
v. someone who lacks a trading interest in the goods covered by the registered trade mark is not one;
vi. if the applicant’s business is based abroad the case should be judged on its merits:
vii. anyone in the same trade who can show he wishes to trade in the same articles and would be hampered or impeded in his business or developing it by the existence of the registration of that trade mark is one;
viii. any trader is an aggrieved person if the registration of the trade mark restrains what would otherwise have been his legal rights;
ix. each case depends on its own facts; and
x. the circumstances of a case may show that an applicant is not aggrieved.”
10. This Court has similarly held that the test is whether the party has a sufficient and justifiable interest to bring the claim and that the term should not be given a conservative or unduly restrictive interpretation. These pronouncements are consistent with the position in Kerly’s Law of Trade Marks and Trade Names (11th Edition) that:
“The persons who are aggrieved are, it is held, all persons who are in some way or other substantially interested in having the trade mark removed – where it is a question of removal – from the Register; including all persons who would be substantially damaged if the trade mark remained, and all trade rivals over whom an advantage was gained by a trader who was getting the benefit of a registered trade mark to which he was not entitled.”
11. In LA Group (Pty) Ltd V Lifestyle Equities CV, [2023] KEHC 17351 (KLR) this Court reaffirmed that being deemed an aggrieved person is not the same as succeeding on merits. It is merely a threshold requirement that affords the party standing to bring an opposition or cancellation action. It opens the courthouse doors but does not guarantee success as the claimant must still prove their case once inside.
12. Against this background, I respectfully disagree with the finding of the Registrar on the question of whether the appellant qualifies as an aggrieved person. In my considered view, the appellant does indeed meet the threshold. The evidence on record shows that the appellant filed Trade Mark Application No. 109796 LIVESCORE in Kenya on 31st October 2019. This application was rejected solely on the basis of the prior registration of the respondent’s mark.
13. This sequence of events establishes a direct, specific, and adverse legal impact on the appellant’s commercial interests arising from the continued registration of the respondent’s mark. The appellant was not acting as a meddlesome interloper or a common informer, but as a trader with an intention to enter the Kenyan market under a specific trade mark.
14. The rejection of its application because of the existence of the respondent’s mark placed a legal impediment in the way of the appellant’s business activities. That in itself constitutes a substantial interest sufficient to bring the appellant within the meaning of “a person aggrieved” under Section 35(1) of the Act.
15. As trade competitors, the presence of the respondent’s mark on the register has the potential to confer a commercial advantage upon the respondent while simultaneously curtailing the appellant’s ability to enter or operate freely in the same space.
16. Accordingly, I find that the appellant’s interest in the subject mark is neither remote nor speculative. It is grounded in a demonstrable commercial initiative that was thwarted by the impugned registration. That fact alone entitles the appellant to bring these proceedings, irrespective of whether the expungement claim ultimately succeeds on its merits. I therefore find and hold that the appellant is an aggrieved person for purposes of Section 35(1) of the Act.
ii. Whether “LIVESCORE” is a well-known mark in Kenya under Section 15A:
17. The appellants maintain that the mark LIVESCORE enjoys widespread global recognition in connection with real-time sports score services and should, by extension, be considered a well-known mark within the Kenyan market. They take issue with the Registrar’s finding to the contrary and fault the decision for failing to appreciate the full scope and weight of the evidence submitted in support of their claim.
18. In particular, the appellants argue that the Registrar improperly disregarded key material demonstrating the global repute of the LIVESCORE mark, including extensive international registrations, advertising efforts, and commercial partnerships. The appellants further contend that prior actual use of the mark within Kenya is not a prerequisite for recognition as a well-known mark.
19. The appellant relies on the case of AM Moolla Group Ltd and Others V Gap Inc. and Others, No. 123/2004 for the submission that the protection conferred on well-known trade marks is therefore an exception of the territorial principle. Its rationale appears to be that famous marks, by virtue of their widespread reputation and recognition, can attract protection even in jurisdictions where they have not yet been used, provided the mark is known to the relevant sector of the public.
20. The appellant contends that the Registrar ought to have appreciated the evidence in its entirety including the duration and geographical area of the appellant’s registrations, applications for registration, of the mark, the duration, extent and geographical area of any use of the mark and the value associated with the mark.
21. However, the respondents support the findings of the Registrar, maintaining that the appellants failed to produce credible evidence of the reputation or recognition of the LIVESCORE mark within the Kenyan context. They emphasize that for a mark to qualify as well-known under Section 15A, it must be established that the mark is known by a substantial segment of the relevant public in Kenya. Recognition must therefore be local, not merely global. To accept otherwise would undermine the territorial character of trade mark law.
22. Section 15A of the Trade Marks Act incorporates Article 6bis of the Paris Convention and Article 16(2) of TRIPS, which require recognition of a trade mark in the jurisdiction where protection is sought. Section 15A (1) provides in part that: ‘References in this Act to a trade mark which is entitled to protection under the Paris Convention or the WTO Agreement as a well-known trade mark, are to a mark which is well known in Kenya …’ Thus, the key condition for Section 15A (1) protection is that the mark must qualify as well-known in Kenya.
23. In addition to this statutory provision, there is sufficient judicial pronouncement on the fact that the application of protection for well-known marks must be examined in the context of the local market.
24. In Sony Corporation V Sony Holding Limited, [2018] eKLR, Sony Corporation, a globally recognized electronics manufacturer, opposed the registration of the trade mark "Sony Holding Limited" by a local entity in Kenya. Sony Corporation argued that its "Sony" mark was well-known internationally and deserved protection under Kenyan law, even though it was not registered in Kenya at the time.
25. The court declined to take judicial notice of Sony's international reputation, underscoring that well-known status must be substantiated with concrete evidence specific to the Kenyan market. This Court held that:
“A person asserting well-knowness of a trade mark bears the responsibility of submitting information (evidence) in respect to factors from which the competent authority may infer that the trade mark is indeed well known. This is not left to the perception or personal inclination of the competent authority.’’
26. In LA Group (Pty) Ltd case, supra, this court reiterated that for a mark to be deemed well-known in Kenya, there must be substantial evidence demonstrating its recognition among the relevant sector of the Kenyan public. In this case the court faulted the appellant for failing to present compelling evidence of the mark's reputation in Kenya, such as consumer surveys, sales figures, or advertising reach within the country. The court also acknowledged the protection afforded to well-known marks under international treaties but emphasized that such protection is contingent upon proving the mark's recognition within the local jurisdiction.
27. This position finds resonance in international jurisprudence. In ConAgra Inc. v McCain Foods (Aust) Pty Ltd, [1992] FCA 176, the Federal Court of Australia underscored that evidence of a mark's reputation must be demonstrated within the jurisdiction in which protection is sought. The court cautioned against conflating international fame with local reputation. This was further emphasized in Alain Bernardin et Compagnie v Pavilion Properties Ltd, [1967] RPC 581, where the UK court held:
“A trader cannot acquire goodwill in this country without some sort of user in this country… I do not think that the mere sending into this country by a foreign trader of advertisements advertising his establishment abroad could fairly be treated as user in this country.”
28. The appellant contends that it furnished sufficient evidence to demonstrate that the LIVESCORE mark was well known in Kenya prior to the respondent’s registration. In particular, the appellant relies on user statistics indicating visitations to its website from Kenya and the number of downloads of the LIVESCORE mobile application by users within the Kenyan jurisdiction.
29. While these data points are intended to show prior exposure and recognition of the mark in Kenya, I note that the statistics are presented in tabular form without any accompanying source documentation or verification. There is no supporting material such as independent analytics reports or third-party evidence to confirm market penetration or consumer recognition within Kenya.
30. In matters involving well-known marks, mere assertions or secondary data without provenance do not satisfy the evidentiary threshold. As established in the Sony Corporation case and reaffirmed in the LA Group (Pty) Ltd case, a party asserting that a mark is well known must provide concrete, jurisdiction-specific evidence of its recognition among the relevant public. Absent such substantiation, the claim that the mark is well known in Kenya cannot be sustained.
31. With respect to the appellant’s reliance on partnerships, advertisements, and football broadcasts in Kenya as evidence of the LIVESCORE mark’s presence and recognition in the Kenyan market, I agree with the Registrar’s observation that much of this evidence pertains to activities that occurred after 16th November 2018, the date when the respondent filed the application for registration.
32. For purposes of establishing that the mark was well known in Kenya at the material time, it is critical that the supporting evidence demonstrates recognition prior to the respondent’s application. Evidence of subsequent use does not assist the appellant in proving that the LIVESCORE mark had already acquired the necessary reputation among the relevant Kenyan public at the time of the contested registration. As such, the Registrar cannot be faulted for finding that the evidence did not meet the threshold under Section 15A.
iii. Whether the proprietor had a valid claim to proprietorship under Section 20(1):
33. The appellant contends that it was the first to use the LIVESCORE trade mark in connection with its services and points out that the mark was registered with the United States Patent and Trademark Office (USPTO) as early as 31st July 1998. It faults the Assistant Registrar for failing to consider that the appellant holds prior registrations for identical marks in various jurisdictions well before the respondent’s application was filed in Kenya on 16th November 2018. The appellant argues that this prior international use and registration, coupled with the reputation and goodwill acquired globally, establishes superior proprietary rights.
34. Further, the appellant alleges that the respondent acted in bad faith by registering the LIVESCORE mark, asserting that it is implausible that the respondent could have independently conceived the mark without knowledge of the appellant’s long-standing use and global presence. It contends that the prior use and worldwide visibility of the mark should have led the Registrar to find that the respondent's conduct lacked bona fides.
35. On the issue of proprietorship, the appellant argues that the burden lay with the respondent to demonstrate not only that it was the rightful proprietor of the mark at the time of registration, but also that the mark met the statutory requirements for registration under Sections 14, 15A, and 20(1) of the Trade Marks Act. The appellant maintains that the Registrar erred in failing to find that the respondent’s mark was likely to deceive or cause confusion, especially given the identical nature of the marks and the fact that the goods and services covered under both are of the same description.
36. The respondent opposes these grounds, arguing that the burden of proof lay squarely on the appellant to demonstrate that the mark was not registrable or that it was likely to cause confusion under Section 14. The respondent supports the Registrar’s finding that no such evidence was produced, particularly in relation to establishing that the appellant’s mark was well-known in Kenya. The respondent maintains that its application was made in good faith and in compliance with the law, and that at the time of filing, there was no conflicting registration in Kenya.
37. The respondent further submits that the existence of foreign registrations is immaterial to the question of registrability in Kenya, citing the territorial nature of trade mark rights. It also argues that the bad faith claim is being raised for the first time on appeal, and was not properly pleaded or addressed before the Registrar.
38. Having reviewed the record and the ruling of the Registrar, I note that there was no express allegation or consideration of bad faith in the proceedings before the Registrar as they are being raised before this forum, making it inappropriate to adjudicate over the same.
39. That said, a central point of divergence between the parties concerns the allocation of the burden of proof, specifically, whether it was incumbent upon the appellant or the respondent to establish the registrability and proprietorship of the LIVESCORE mark, and to prove or disprove the existence of prior rights. I find that the respondent’s position is supported by law. The starting point is Section 23(1) of the Trade Marks Act, which provides that:
“In all legal proceedings relating to a registered trade mark... the registration of a person as proprietor... shall be prima facie evidence of the validity thereof.”
40. This provision codifies the principle that registration gives rise to a rebuttable presumption of validity. As a result, the burden rests upon the person challenging the registration to demonstrate, on a balance of probabilities, that the registration should not have been granted or ought to be removed. This position was affirmed in Sony Corporation [supra], where the court held:
“The onus is on the party opposing a registered mark to establish the basis upon which the registration should be expunged or invalidated. The presumption of validity under Section 23 must be displaced by clear and cogent evidence.”
41. Similarly, in LA Group (Pty) Ltd [supra], this court reaffirmed that a party claiming that a mark is well known or that it enjoys superior proprietary rights bears the evidentiary burden to establish those facts. The court noted that the existence of foreign registrations or global fame does not, on its own, satisfy the burden of proving well-known status under Section 15A unless specific, relevant, and credible evidence is adduced to show the mark’s recognition within Kenya.
42. The Act permits any person claiming to be the proprietor of a trade mark used or proposed to be used to apply for registration. The Registrar was correct in finding that, as at 16th November 2018, there was no evidence of use or registration of the LIVESCORE mark in Kenya by the appellant. The appellant’s assertions regarding international recognition, do not, in and of themselves, establish proprietorship or bar the respondent’s application absent proof of recognition in the Kenyan jurisdiction.
43. In Lacoste V Crocodile International PTE Ltd, [CIV 2009-485-2536], the High Court of New Zealand held that in determining questions of proprietorship, the party who first used or applied to register the mark in good faith, and without knowledge of any competing interest, holds a valid claim. The court emphasized that a registered proprietor must demonstrate that the mark had not been previously used by another in the relevant jurisdiction, and that the applicant has used or intends to use the mark in that jurisdiction. This principle aligns with the requirements of Section 20(1) of the Kenyan Trade Marks Act.
44. The Registrar after considering the evidence found that the respondent had a legal and valid claim to the mark because the appellant’s mark was not a well-known mark, that there was no prior use of the mark before the application made by the respondent on 16th November 2018 and by that, the subsequent registration of the mark was not in contravention of Sections 14 and 15A of the Act.
45. I find no basis to disturb the Registrar’s conclusion. The respondent’s application was made in accordance with the provisions of the law, and no sufficient evidence was led to rebut the presumption of validity attached to the registration. Accordingly, this Court upholds the Registrar’s finding that the respondent satisfied the requirements of Section 20(1) of the Trade Marks Act.
Disposition
46. For the reasons stated above, and having carefully considered the Registrar’s decision and the grounds of appeal, this Court finds no error that would justify setting aside the Registrar’s ruling.
47. Accordingly, the appeal is dismissed with costs. The decision of the Registrar of Trade Marks delivered on 7th July, 2023 is affirmed.
DATED, SIGNED AND DELIVERED IN NAIROBI
THIS 22ND DAY OF APRIL 2025.
F. MUGAMBI
JUDGE