JUDGEMENT
1. This is a Judgement arising out of rival claims of trade mark infringements and passing off.
Background Facts
2. The Plaintiff is a medical practitioner. He filed the Plaint dated 9th July 2021 and averred that he is the registered proprietor of the “MILELE” trademark (No. 113179, Class 44) and has operated under the name “MILELE Integrated Medical Services” since 2009. Over time, the Plaintiff has established substantial goodwill and reputation in Githurai and its environs, with the mark becoming distinctive of his medical services.
3. Between 2009 and 2013, the Plaintiff permitted the 1st Defendant to practice as a dentist within his premises under licence. Later, the 1st Defendant set up his own practice. However. He continued using the name “MILELE,” including operating as “Milele Dental Care Limited” in close proximity to the Plaintiff’s business, despite requests to cease such use.
4. The Plaintiff contended that the 1st Defendant’s actions amount to trademark infringement and passing off, causing confusion among clients, loss of business, and reputational damage. This confusion has been worsened by misleading signage and client complaints. Although the Defendants previously acknowledged the infringement and undertook to stop, they have continued using the name, thereby causing ongoing loss to the Plaintiff.
5. The passing off and infringement of the trade mark " MILELE" by the Defendants has caused the Plaintiff to suffer and continues to suffer irreparable damages as a result of the 1st Defendant's illegal and unlawful action.
6. Therefore, the Plaintiff prays for judgment against the Defendants as follows:
a) A declaration that the Defendants have infringed the Plaintiff's trademark "Milele" and/or passed-off the Plaintiff's trade name "Milele".
b) An injunction restraining the Defendants whether by themselves, their servants and/or agents from infringing the Plaintiff's intellectual property rights as the lawful proprietor of "Milele" trademark.
c) An injunction restraining the Defendants whether by themselves, their servants and/or agents from trading, promoting, advertising, marketing, carrying on business and/or using any trade documents with the "Milele" trademark or in any way dealing with the trademark.
d) General damages for infringement of trade mark and passing off
e) Costs of this suit.
f) Any further and other relief that this Honourable Court may deem fit to grant.
7. In response to the Plaint, the Defendants filed the Statement of Defence and Counterclaim dated 14th September 2023. The 2nd Defendant averred that no complaint or demand was ever received from the Plaintiff since the commencement of its operations in 2009, its registration as a business name in 2013, or as a company in 2016. Further, the Plaintiff has never registered the trademark “Milele Dental Care”. That while the Plaintiff may have traded as “Milele Integrated Medical Services” since 2009, the “MILELE” trademark itself was only registered on 19th May 2021, long after the Defendants’ establishment.
8. The Defendants denied any infringement or passing off. They asserted that the 1st Defendant merely rented space from the Plaintiff while independently offering dental services. They also maintained that “Milele Dental Care Limited” is a distinct entity, offering specialized dental services, and that the Plaintiff is not a qualified dental practitioner. As such, they argued there can neither be any confusion between the parties’ services, businesses, nor any misrepresentation to the public.
9. Additionally, the Defendants argued that the Plaintiff acquiesced to their use of the name over the years and is therefore estopped from raising objections now. They further contend that no evidence of goodwill, confusion, or loss has been demonstrated. That the claim is time-barred and overtaken by events due to a change of the 2nd Defendant’s name. Consequently, they assert that the suit discloses no reasonable cause of action and is liable to dismissal.
10. In the Counterclaim, the Defendants to the Counterclaim who are now the Plaintiffs (for avoidance of any confusion referred to as the Plaintiffs to the Counterclaim) asserted that they have built substantial goodwill and reputation in dental services since 2009 through significant investment and consistent operations under the name “Milele Dental Care Limited.” This includes obtaining licenses, registering the business and company, securing permits, advertising services, conducting community dental outreach, and offering services to government institutions, earning recognition in the process.
11. They further contended that the Defendant to the Counterclaim, aware of their established reputation and client base, acted maliciously by registering the disputed trademark, thereby frustrating their business. As a result of continued interference, the Plaintiffs to the Counterclaim were compelled to rebrand, leading to loss of goodwill and clientele. They argued that the Defendant to the Counterclaim had long acquiesced to their use of the name and is now estopped from objecting. Further, that the trademark registration was fraudulent given the Defendant to the Counterclaim’s prior knowledge of their longstanding use.
12. They prayed for judgment against the Defendant to the Counterclaim as follows:
a) Cancellation of the trademark.
b) General damages.
c) Costs of the suit and interest thereon.
The Plaintiff’s Evidence
13. PW1 confirmed that he is a healthcare practitioner and proprietor of Milele Integrated Medical Services since 2009. That the 1st Defendant was initially his employee until 2013, operating under the Plaintiff’s licence. He further testified that although the Defendants had been using the name “Milele Dental Care Limited” since 2013, he only registered the “Milele” trademark in 2020, and that his facility provides a range of services including maternal and child health, outpatient care, youth services, and dental services.
The Defendant’s Evidence
14. DW1 confirmed that “Milele Dental Care Limited” has been operational since 2013, offering dental services after he left the Plaintiff’s premises. He had previously rented space at the Plaintiff’s at KES 7,000 per month. He stated that while at the Plaintiff’s facility, he exclusively provided dental services, whereas the Plaintiff offered general medical services. He further maintained that he is duly licensed to provide dental care while the Plaintiff is not.
15. He also testified that he did not receive any complaints from the Plaintiff until February 2021, when he was issued with a demand letter alleging passing off. DW1 added that patients independently choose which clinic to attend. He took steps to change the business name after learning of the Plaintiff’s trademark registration, with the change eventually effected in June 2022 due to procedural delays.
Issues for determination
16. The Court has carefully considered the Plaintiff’s case as well as the Defendants’ case and their submissions against the evidence availed before the Court. The Court frames the following issues for determination;
a) Whether the Defendants infringed on the Plaintiff’s trademark.
b) Whether damages are payable.
c) Whether the Plaintiff is entitled to the injunction sought.
d) Whether the Defendant is entitled to the reliefs in the Counterclaim.
Analysis
17. This is a claim for trademark infringement and passing off.
a) Whether the Defendants infringed on the Plaintiff’s trademark.
18. In determining a suit of infringement of a trademark, the conditions as held in the case of Landor LLC and Wpp Luxembourg Gamma Sarl v Wagude Lui t/a Landor & Associates & 2 Others [2019] eKLR are as follows;
“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.”
19. The use of a registered trademark exclusively is provided for under Section 7 (1) of the Trade Marks Act, which states as follows;
“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 –
a. be taken either as being used as a trade mark;
b. be taken in a case in which the use is upon the goods or in physical relation thereto or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or as licensee to use the trade mark or goods with which such a person is connected in the course of trade;
c. be taken in a case where the use is use at or near the place where the services are available for acceptance or performed or in an advertising circular or other advertisement issued to the public or any part thereof, as importing a reference to some person having the right either as proprietor or as licensee to use the trade mark or to services with the provision of which such a person as aforesaid is connected in the course of business;
d. cause injury or prejudice to the proprietor or licensee of the trade mark”.
20. In consideration of the above grounds, firstly, it is undisputed that the Plaintiff is the registered proprietor of the Trade mark “MILELE” as evidenced by the Plaintiff’s Certificate of Registration of Trademark dated 3rd August 2020 (Trademark No. 113179 under Class 44 (Medical services, Veterinary Services, hygienic and beauty care for human beings or animals),
21. On to the second ground. The alleged infringement was a Mark identical with or which 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.
22. The Plaintiff herein has been operating under the Business Name "MILELE" Integrated Medical Services in Githurai, which business was registered on 27th July 2009, as appears from the Certificate of Registration of Business Name. On the other hand, the 1st Defendant's business name is “MILELE" Dental Care Limited, the 2nd Defendant herein.
23. It is the Court’s considered view that the names are identical as they both offer medical services, thus likely to cause confusion. On this, the Court is guided by the holding in Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV (case C- 342/97);
“The average consumer normally perceives a mark as a whole and does not to proceed to analyse its various details. For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question”
24. Was the use of the Mark made without the consent or authority of the Proprietor? It is common ground that the use of the word “MILELE” was without the consent of the Plaintiff. However, in the Defendants’ defence, they argued that the Plaintiff was fully aware of the Defendants' prior use of the name "Milele Dental Care Limited" since 2013. Yet, he proceeded to register the trademark in 2021 with the intent to stifle the Defendants' business. The Court notes that the Certificate of Registration shows that the Defendant’s business name, Milele Dental Care, was registered on 24th May 2013, prior to the Trademarking of the name by the Plaintiff.
25. It is the Court’s considered view that, before the registration of the trademark of the name “MILELE”, the Plaintiff was already using the name. Therefore, he had prior rights based on goodwill and reputation. Therefore, the Defendants ought to have sought the consent of the Plaintiff before using the same name.
26. The third condition is that use of Mark is such that it is likely to cause injury or prejudice to the proprietor or licensee of the Trade Mark. On this issue, the Plaintiff submitted that as a result of this misrepresentation occasioned by the striking similarity and resemblance of names, he has and continues to suffer loss and damage.
27. It is noteworthy that the Defendants commenced the process of rebranding to Millenia Healthcare Limited on 9th March 2021, and the Certificate of Change of Name was registered on 23rd June 2022. As it stands, the Defendants are no longer using the name Milele Dental Care but are now Millenia Holistic Medheal Limited. However, the Court notes that the email address as seen on the company search dated 22nd August 2022 still bears the name “Milele” (mileledentalcareltd@gmail.com).
28. In light of the above, the Court finds that the Plaintiff has succeeded in its action for Trademark infringement.
b) Whether damages are payable.
29. Further to the above, the Plaintiff sought to be awarded damages for the passing off and infringement by the Defendant for the loss incurred. It was the Plaintiff’s submission that general damages of Kshs. 5 million are sufficient to compensate him for the loss suffered as a result of his trademark infringement and passing off by the Defendants.
30. The elements of the tort of passing off were laid out in Newton Oirere Nyambariga v KCB Bank Kenya limited & Another [2017] eKLR, where the Court observed;
“19. A passing off claim is a right of trader to bring a legal action for protection of goodwill. It is actionable under the law of unfair competition and sometimes as a Trademark infringement. In Reckitt & Colman Products Ltd. Vs. Borden Inc & others,(1990) R.P.C.34 Lord Oliver Aylmerton sets out the three element to be proved in an action for passing off. He states:-
“The law of passing off can be summarized in one short general proposition, no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the Plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying “get up”(whether it consists simply of a brand name or a trade description, or the individual features of labelling or packing) under which his particular goods or services are offered to the public, such that the get up is recognized by the public as distinctive specifically of the Plaintiff’s goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the Plaintiff. Whether the public is aware of the plaintiff’s identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the Plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the band name. Thirdly, he must demonstrate that he suffers or, in a quia timet action that he is likely to suffer, damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s good or services is the same as the source of those offered by the Plaintiff.”
31. The Plaintiff argued that he has operated as “MILELE” Integrated Medical Services in Githurai and its environs since 2009. This is a span of approximately seventeen years, during which he has built substantial goodwill and reputation in the provision of medical services. He stated that he has consistently invested resources in marketing, promoting, and advertising his services under the “MILELE” mark. That he has cultivated a strong reputation for quality care, making the name widely recognized and closely associated with his identity. Consequently, the Plaintiff contended that he has established protectable goodwill and reputation in the “MILELE” mark.
32. In opposition to this, the Defendants asserted that they have diligently built substantial goodwill and reputation in dental services since 2009. This is through consistent investment and operations, including obtaining licenses, registering Milele Dental Care Limited as a business name in 2013 and as a company in 2016, securing permits, and paying for signage with the Nairobi County Government. They further stated that the 1st Defendant acquired the necessary professional qualifications. That they actively marketed their services through community dental camps, while also providing dental healthcare services to government institutions and receiving commendations, thereby establishing a strong and reputable presence in the sector.
33. The Court finds that the Plaintiff built a reputation for quality medical services such that the popularity of his trade name "MILELE", among customers, has rendered it inseparable from his identity. It has been recognized by the public as distinctive of the Plaintiff's medical services.
34. In the case o Ezeetile Kenya Ltd v Dg Services Limited [2025] KEHC 12098 (KLR) the Court found as follows;
“On the issue of damages payable, the Plaintiff stated that it had suffered financial loss. no accounts were given as an indicator of how the Plaintiff’s sales have been affected. Nevertheless, the defendant must have benefitted financially by riding on the Plaintiff’s trademark and goodwill in the market. There being no figures to guide this court on damages payable, a global award of Kshs. 3,000,000 is hereby granted as General Damages for infringement of the registered trademark.”
35. In considering the claim for general damages, the Court takes note of the duration of infringement. The Court that the Dedendants voluntarily did change their name and rebrand themselves. The Court therefore finds that a global award of Kshs. 1,500,000 (Kenya Shillings One Million Five Hundred) is sufficient.
c) Whether the Plaintiff is entitled to the injunction sought.
36. The evidence led was that the 2nd Defendant had long dropped the name “MILELE.”from its name. It now trades as Millenia Holistic Medheal Limited. There is no evidence that the Defendant is continuing with the infringement. This Court reminds itself that it neither acts in vain nor determines moot questions or issues. In the circumstances the injunction sought is declined.
37. As to the Counterclaim, it must fail because this Court has found that the Defendant was guilty of Trademark infringement. There was no evidence of proceedings before the Registrar of Trademarks for deregistration of the Mark. This Court is also at a loss as to why the Defendant would want the mark deregistered if it does not resemble or bear a close resemblance to the 2nd Defendant’s name. For these reasons a case for general damages has not been made out.
38. To this Court a genuine apology from the outset and an offer to change of name by the Defendants would have avoided this suit or ameliorate the financially painful consequences of the suit. Instead the Defendants chose to stand their legal ground which was in any case shaky.
39. As to costs, the same lie at the discretion of this Court and follow the event. The Plaintiff is entitled to the costs of the suit. The Plaintiff is also entitled to the costs of the Counterclaim that now stands dismissed.
Determination.
40. Judgement is hereby entered for the Plaintiff as against the Defendants jointly and severally as follows;
a) A declaration is HEREBY issued that the Defendants have infringed the Plaintiff's trademark "Milele" and/or passed-off the Plaintiff's trade name "MILELE".
b) An award of Kshs. 1.500,000/- (Kenya Shillings One Millon Five Hundred) is HEREBY issued for General damages for infringement of trade mark and passing off.
c) Costs of this suit are HEREBY awarded to the Plaintiff.
41. The Defendants Counterclaim is HEREBY dismissed for lack of merits.
42. The costs of the Counterclaim are HEREBY awarded to the Plaintiff.
43. Interest on general damages and costs at Court rates from the date of Judgement until payment in full.
44. It is so ordered.
DATED, SIGNED AND DELIVERED AT MILIMANI THIS 11TH DAY OF MAY, 2026.
NJOROGE BENJAMIN K.
JUDGE
In the presence of;
Mr. Waweru holding brief for Mr. Lundi for the Plaintiff.
Mr. Ndolo holding brief for Miss Kilonzo for the Defendant.
Ms. Susan Nzioka - Court Assistant.
1. This is a Judgement arising out of rival claims of trade mark infringements and passing off.
Background Facts
2. The Plaintiff is a medical practitioner. He filed the Plaint dated 9th July 2021 and averred that he is the registered proprietor of the “MILELE” trademark (No. 113179, Class 44) and has operated under the name “MILELE Integrated Medical Services” since 2009. Over time, the Plaintiff has established substantial goodwill and reputation in Githurai and its environs, with the mark becoming distinctive of his medical services.
3. Between 2009 and 2013, the Plaintiff permitted the 1st Defendant to practice as a dentist within his premises under licence. Later, the 1st Defendant set up his own practice. However. He continued using the name “MILELE,” including operating as “Milele Dental Care Limited” in close proximity to the Plaintiff’s business, despite requests to cease such use.
4. The Plaintiff contended that the 1st Defendant’s actions amount to trademark infringement and passing off, causing confusion among clients, loss of business, and reputational damage. This confusion has been worsened by misleading signage and client complaints. Although the Defendants previously acknowledged the infringement and undertook to stop, they have continued using the name, thereby causing ongoing loss to the Plaintiff.
5. The passing off and infringement of the trade mark " MILELE" by the Defendants has caused the Plaintiff to suffer and continues to suffer irreparable damages as a result of the 1st Defendant's illegal and unlawful action.
6. Therefore, the Plaintiff prays for judgment against the Defendants as follows:
a) A declaration that the Defendants have infringed the Plaintiff's trademark "Milele" and/or passed-off the Plaintiff's trade name "Milele".
b) An injunction restraining the Defendants whether by themselves, their servants and/or agents from infringing the Plaintiff's intellectual property rights as the lawful proprietor of "Milele" trademark.
c) An injunction restraining the Defendants whether by themselves, their servants and/or agents from trading, promoting, advertising, marketing, carrying on business and/or using any trade documents with the "Milele" trademark or in any way dealing with the trademark.
d) General damages for infringement of trade mark and passing off
e) Costs of this suit.
f) Any further and other relief that this Honourable Court may deem fit to grant.
7. In response to the Plaint, the Defendants filed the Statement of Defence and Counterclaim dated 14th September 2023. The 2nd Defendant averred that no complaint or demand was ever received from the Plaintiff since the commencement of its operations in 2009, its registration as a business name in 2013, or as a company in 2016. Further, the Plaintiff has never registered the trademark “Milele Dental Care”. That while the Plaintiff may have traded as “Milele Integrated Medical Services” since 2009, the “MILELE” trademark itself was only registered on 19th May 2021, long after the Defendants’ establishment.
8. The Defendants denied any infringement or passing off. They asserted that the 1st Defendant merely rented space from the Plaintiff while independently offering dental services. They also maintained that “Milele Dental Care Limited” is a distinct entity, offering specialized dental services, and that the Plaintiff is not a qualified dental practitioner. As such, they argued there can neither be any confusion between the parties’ services, businesses, nor any misrepresentation to the public.
9. Additionally, the Defendants argued that the Plaintiff acquiesced to their use of the name over the years and is therefore estopped from raising objections now. They further contend that no evidence of goodwill, confusion, or loss has been demonstrated. That the claim is time-barred and overtaken by events due to a change of the 2nd Defendant’s name. Consequently, they assert that the suit discloses no reasonable cause of action and is liable to dismissal.
10. In the Counterclaim, the Defendants to the Counterclaim who are now the Plaintiffs (for avoidance of any confusion referred to as the Plaintiffs to the Counterclaim) asserted that they have built substantial goodwill and reputation in dental services since 2009 through significant investment and consistent operations under the name “Milele Dental Care Limited.” This includes obtaining licenses, registering the business and company, securing permits, advertising services, conducting community dental outreach, and offering services to government institutions, earning recognition in the process.
11. They further contended that the Defendant to the Counterclaim, aware of their established reputation and client base, acted maliciously by registering the disputed trademark, thereby frustrating their business. As a result of continued interference, the Plaintiffs to the Counterclaim were compelled to rebrand, leading to loss of goodwill and clientele. They argued that the Defendant to the Counterclaim had long acquiesced to their use of the name and is now estopped from objecting. Further, that the trademark registration was fraudulent given the Defendant to the Counterclaim’s prior knowledge of their longstanding use.
12. They prayed for judgment against the Defendant to the Counterclaim as follows:
a) Cancellation of the trademark.
b) General damages.
c) Costs of the suit and interest thereon.
The Plaintiff’s Evidence
13. PW1 confirmed that he is a healthcare practitioner and proprietor of Milele Integrated Medical Services since 2009. That the 1st Defendant was initially his employee until 2013, operating under the Plaintiff’s licence. He further testified that although the Defendants had been using the name “Milele Dental Care Limited” since 2013, he only registered the “Milele” trademark in 2020, and that his facility provides a range of services including maternal and child health, outpatient care, youth services, and dental services.
The Defendant’s Evidence
14. DW1 confirmed that “Milele Dental Care Limited” has been operational since 2013, offering dental services after he left the Plaintiff’s premises. He had previously rented space at the Plaintiff’s at KES 7,000 per month. He stated that while at the Plaintiff’s facility, he exclusively provided dental services, whereas the Plaintiff offered general medical services. He further maintained that he is duly licensed to provide dental care while the Plaintiff is not.
15. He also testified that he did not receive any complaints from the Plaintiff until February 2021, when he was issued with a demand letter alleging passing off. DW1 added that patients independently choose which clinic to attend. He took steps to change the business name after learning of the Plaintiff’s trademark registration, with the change eventually effected in June 2022 due to procedural delays.
Issues for determination
16. The Court has carefully considered the Plaintiff’s case as well as the Defendants’ case and their submissions against the evidence availed before the Court. The Court frames the following issues for determination;
a) Whether the Defendants infringed on the Plaintiff’s trademark.
b) Whether damages are payable.
c) Whether the Plaintiff is entitled to the injunction sought.
d) Whether the Defendant is entitled to the reliefs in the Counterclaim.
Analysis
17. This is a claim for trademark infringement and passing off.
a) Whether the Defendants infringed on the Plaintiff’s trademark.
18. In determining a suit of infringement of a trademark, the conditions as held in the case of Landor LLC and Wpp Luxembourg Gamma Sarl v Wagude Lui t/a Landor & Associates & 2 Others [2019] eKLR are as follows;
“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.”
19. The use of a registered trademark exclusively is provided for under Section 7 (1) of the Trade Marks Act, which states as follows;
“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 –
a. be taken either as being used as a trade mark;
b. be taken in a case in which the use is upon the goods or in physical relation thereto or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or as licensee to use the trade mark or goods with which such a person is connected in the course of trade;
c. be taken in a case where the use is use at or near the place where the services are available for acceptance or performed or in an advertising circular or other advertisement issued to the public or any part thereof, as importing a reference to some person having the right either as proprietor or as licensee to use the trade mark or to services with the provision of which such a person as aforesaid is connected in the course of business;
d. cause injury or prejudice to the proprietor or licensee of the trade mark”.
20. In consideration of the above grounds, firstly, it is undisputed that the Plaintiff is the registered proprietor of the Trade mark “MILELE” as evidenced by the Plaintiff’s Certificate of Registration of Trademark dated 3rd August 2020 (Trademark No. 113179 under Class 44 (Medical services, Veterinary Services, hygienic and beauty care for human beings or animals),
21. On to the second ground. The alleged infringement was a Mark identical with or which 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.
22. The Plaintiff herein has been operating under the Business Name "MILELE" Integrated Medical Services in Githurai, which business was registered on 27th July 2009, as appears from the Certificate of Registration of Business Name. On the other hand, the 1st Defendant's business name is “MILELE" Dental Care Limited, the 2nd Defendant herein.
23. It is the Court’s considered view that the names are identical as they both offer medical services, thus likely to cause confusion. On this, the Court is guided by the holding in Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV (case C- 342/97);
“The average consumer normally perceives a mark as a whole and does not to proceed to analyse its various details. For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question”
24. Was the use of the Mark made without the consent or authority of the Proprietor? It is common ground that the use of the word “MILELE” was without the consent of the Plaintiff. However, in the Defendants’ defence, they argued that the Plaintiff was fully aware of the Defendants' prior use of the name "Milele Dental Care Limited" since 2013. Yet, he proceeded to register the trademark in 2021 with the intent to stifle the Defendants' business. The Court notes that the Certificate of Registration shows that the Defendant’s business name, Milele Dental Care, was registered on 24th May 2013, prior to the Trademarking of the name by the Plaintiff.
25. It is the Court’s considered view that, before the registration of the trademark of the name “MILELE”, the Plaintiff was already using the name. Therefore, he had prior rights based on goodwill and reputation. Therefore, the Defendants ought to have sought the consent of the Plaintiff before using the same name.
26. The third condition is that use of Mark is such that it is likely to cause injury or prejudice to the proprietor or licensee of the Trade Mark. On this issue, the Plaintiff submitted that as a result of this misrepresentation occasioned by the striking similarity and resemblance of names, he has and continues to suffer loss and damage.
27. It is noteworthy that the Defendants commenced the process of rebranding to Millenia Healthcare Limited on 9th March 2021, and the Certificate of Change of Name was registered on 23rd June 2022. As it stands, the Defendants are no longer using the name Milele Dental Care but are now Millenia Holistic Medheal Limited. However, the Court notes that the email address as seen on the company search dated 22nd August 2022 still bears the name “Milele” (mileledentalcareltd@gmail.com).
28. In light of the above, the Court finds that the Plaintiff has succeeded in its action for Trademark infringement.
b) Whether damages are payable.
29. Further to the above, the Plaintiff sought to be awarded damages for the passing off and infringement by the Defendant for the loss incurred. It was the Plaintiff’s submission that general damages of Kshs. 5 million are sufficient to compensate him for the loss suffered as a result of his trademark infringement and passing off by the Defendants.
30. The elements of the tort of passing off were laid out in Newton Oirere Nyambariga v KCB Bank Kenya limited & Another [2017] eKLR, where the Court observed;
“19. A passing off claim is a right of trader to bring a legal action for protection of goodwill. It is actionable under the law of unfair competition and sometimes as a Trademark infringement. In Reckitt & Colman Products Ltd. Vs. Borden Inc & others,(1990) R.P.C.34 Lord Oliver Aylmerton sets out the three element to be proved in an action for passing off. He states:-
“The law of passing off can be summarized in one short general proposition, no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the Plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying “get up”(whether it consists simply of a brand name or a trade description, or the individual features of labelling or packing) under which his particular goods or services are offered to the public, such that the get up is recognized by the public as distinctive specifically of the Plaintiff’s goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the Plaintiff. Whether the public is aware of the plaintiff’s identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the Plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the band name. Thirdly, he must demonstrate that he suffers or, in a quia timet action that he is likely to suffer, damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s good or services is the same as the source of those offered by the Plaintiff.”
31. The Plaintiff argued that he has operated as “MILELE” Integrated Medical Services in Githurai and its environs since 2009. This is a span of approximately seventeen years, during which he has built substantial goodwill and reputation in the provision of medical services. He stated that he has consistently invested resources in marketing, promoting, and advertising his services under the “MILELE” mark. That he has cultivated a strong reputation for quality care, making the name widely recognized and closely associated with his identity. Consequently, the Plaintiff contended that he has established protectable goodwill and reputation in the “MILELE” mark.
32. In opposition to this, the Defendants asserted that they have diligently built substantial goodwill and reputation in dental services since 2009. This is through consistent investment and operations, including obtaining licenses, registering Milele Dental Care Limited as a business name in 2013 and as a company in 2016, securing permits, and paying for signage with the Nairobi County Government. They further stated that the 1st Defendant acquired the necessary professional qualifications. That they actively marketed their services through community dental camps, while also providing dental healthcare services to government institutions and receiving commendations, thereby establishing a strong and reputable presence in the sector.
33. The Court finds that the Plaintiff built a reputation for quality medical services such that the popularity of his trade name "MILELE", among customers, has rendered it inseparable from his identity. It has been recognized by the public as distinctive of the Plaintiff's medical services.
34. In the case o Ezeetile Kenya Ltd v Dg Services Limited [2025] KEHC 12098 (KLR) the Court found as follows;
“On the issue of damages payable, the Plaintiff stated that it had suffered financial loss. no accounts were given as an indicator of how the Plaintiff’s sales have been affected. Nevertheless, the defendant must have benefitted financially by riding on the Plaintiff’s trademark and goodwill in the market. There being no figures to guide this court on damages payable, a global award of Kshs. 3,000,000 is hereby granted as General Damages for infringement of the registered trademark.”
35. In considering the claim for general damages, the Court takes note of the duration of infringement. The Court that the Dedendants voluntarily did change their name and rebrand themselves. The Court therefore finds that a global award of Kshs. 1,500,000 (Kenya Shillings One Million Five Hundred) is sufficient.
c) Whether the Plaintiff is entitled to the injunction sought.
36. The evidence led was that the 2nd Defendant had long dropped the name “MILELE.”from its name. It now trades as Millenia Holistic Medheal Limited. There is no evidence that the Defendant is continuing with the infringement. This Court reminds itself that it neither acts in vain nor determines moot questions or issues. In the circumstances the injunction sought is declined.
37. As to the Counterclaim, it must fail because this Court has found that the Defendant was guilty of Trademark infringement. There was no evidence of proceedings before the Registrar of Trademarks for deregistration of the Mark. This Court is also at a loss as to why the Defendant would want the mark deregistered if it does not resemble or bear a close resemblance to the 2nd Defendant’s name. For these reasons a case for general damages has not been made out.
38. To this Court a genuine apology from the outset and an offer to change of name by the Defendants would have avoided this suit or ameliorate the financially painful consequences of the suit. Instead the Defendants chose to stand their legal ground which was in any case shaky.
39. As to costs, the same lie at the discretion of this Court and follow the event. The Plaintiff is entitled to the costs of the suit. The Plaintiff is also entitled to the costs of the Counterclaim that now stands dismissed.
Determination.
40. Judgement is hereby entered for the Plaintiff as against the Defendants jointly and severally as follows;
a) A declaration is HEREBY issued that the Defendants have infringed the Plaintiff's trademark "Milele" and/or passed-off the Plaintiff's trade name "MILELE".
b) An award of Kshs. 1.500,000/- (Kenya Shillings One Millon Five Hundred) is HEREBY issued for General damages for infringement of trade mark and passing off.
c) Costs of this suit are HEREBY awarded to the Plaintiff.
41. The Defendants Counterclaim is HEREBY dismissed for lack of merits.
42. The costs of the Counterclaim are HEREBY awarded to the Plaintiff.
43. Interest on general damages and costs at Court rates from the date of Judgement until payment in full.
44. It is so ordered.
DATED, SIGNED AND DELIVERED AT MILIMANI THIS 11TH DAY OF MAY, 2026.
NJOROGE BENJAMIN K.
JUDGE
In the presence of;
Mr. Waweru holding brief for Mr. Lundi for the Plaintiff.
Mr. Ndolo holding brief for Miss Kilonzo for the Defendant.
Ms. Susan Nzioka - Court Assistant.