1. The Plaintiff instituted this suit by way of a plaint dated 10th July 2023. seeking judgment against the Defendant in the form of:
i. A permanent injunction restraining the Defendant from using or promoting business associated with Trademark No. 99870 commuter train advert, in class 35.
ii. An award of damages in US Dollars for alleged infringement of the trademark.
iii. Costs and interest in US Dollars.
2. The Plaintiff’s case is that he is the proprietor and director of City Eye Advertising Agency and the registered owner of Trademark No. 99870 “COMMUTER TRAIN ADVERT” in Class 35 which, he alleges, covers advertising services effected by branding commuter trains internally and externally.
3. The Plaintiff avers that the trademark is a service mark protected under the Trade Marks Act, Cap 506, and it comprises both figurative and descriptive elements the dominant feature being a train device together with the words “Commuter Train Advert.” He contends that registration confers upon him the exclusive right to provide and control advertising services of the nature described in Class 35, namely, branding of commuter trains with advertising material.
4. The Plaintiff further alleges that the Defendant, Safaricom PLC, without his authority, branded commuter trains with advertising material promoting the Defendant’s M Pesa product. The Plaintiff asserts that following service of a cease and desist letter the Defendant persisted in the impugned advertising activities.
5. Central to the Plaintiff’s claim is the contention that the Defendant’s train branding employs a device and overall graphic presentation that is identical or confusingly similar to the Plaintiff’s registered mark, such that the Defendant’s use amounts to unlawful exploitation of the Plaintiff’s exclusive rights under the Trade Marks Act. The Plaintiff also pleads that the Defendant is licensed to provide telecommunications and financial services, not the advertising services for which the Plaintiff’s mark is registered, and that the Defendant has thereby derived substantial commercial benefit from advertising to large numbers of train commuters.
6. The Defendant filed the statement of defence dated 19th January 2024 and amended on 21st February 2025 denying the substantive allegations in the Plaint and admits only the descriptive facts as to the parties, putting the Plaintiff to strict proof of the remaining averments. The Defendant has signaled its intention to apply to strike out the suit under Order 2 Rule 15 on the basis that the plaint discloses no reasonable cause of action and constitutes an abuse of process.
7. It avers that, pursuant to section 19 of the Kenya Railways Corporation Act, Kenya Railways Corporation is the sole operator of railway transit systems and, in March 2021, appointed Digital Mara as its exclusive advertising partner. Accordingly, Safaricom lawfully engaged Digital Mara to market its services on the Standard Gauge Railway and did not usurp any exclusive advertising rights claimed by the Plaintiff.
8. The Defendant contends that as a telecommunications provider, it may advertise through any agency of its choice, denies use of the Plaintiff’s trade name, and disputes that Trade Mark No. 99870 confers monopoly rights over all train advertising.
9. It asserts the certificate protects the mark as a whole only, disclaims exclusive use of the individual words and device elements, and that a service mark merely distinguishes services rather than conferring exclusive rights over a category of activity. The Defendant further pleads that the Plaintiff lacked authority from Kenya Railways to provide train advertising, challenges this Court’s jurisdiction, and maintains the suit is speculative. It therefore prays for dismissal with costs.
Evidence
10. At the hearing, the Plaintiff and the Defendant each called one witness.
11. Zakayo Muchai Wainaina testified as Pw1. He testified that he is the proprietor of City Eye Advertising Agency and adopted his witness statement and list of documents, both dated 10th July 2023 and the further list of documents dated 2nd March 2025 as his evidence in chief. He testified that he registered trademark No. 99870 and No. 100791. He avers that the Defendant branded their product on commuter trains in total infringement of his trademark.
12. In cross-examination by Mr. Opiyo he testified that his business is in Maua Meru County. He states that the Trade Mark ZWM2 is a service mark and covers both the trademark itself and the service. He states the trademark is figurative. He testified that there are the words “COMMUTER TRAIN ADVERT” and a photo of the Train.
13. He contended that the Registrar states that he does not have exclusive right to all the words and the picture of the “Train”.
14. He stated that the Trademark for M-pesa is a word mark. That his trademark Certificate and that of M-pesa certificate are not the same as they are registered in different classes, the Train is a figurative trademark while his was an advertisement outside and inside the train.
15. He stated that the two trademarks are not phonetically similar, though the similarity is what the Defendant advertises. He maintains that his trademark gives him the right to advertise on the train and in Kenya. That Section 7 of the Trademarks Act gives him exclusive rights. That it is a property service and he is the only one with the exclusive rights to advertise on the train.
16. Dw1 - Cerere Kihoro, is the legal counsel for Technology & Corporate Center at Safaricom. He adopted his witness statement, list of documents and further list of documents all dated 8th October 2025.
17. In cross examination, he testified that the Defendant has a trade mark which allows them put up an M-pesa branding where they have an agreement. That the Defendant has an agreement with Kenya Railways through Digital Mara to advertise on the commuter train.
18. He further testified that the Trademark is registered in Class 25 which comprises of money transfer services and not advertisement services. And that Defendant did not have a trademark certificate with Kenya Railways for advertisement inside and outside the train.
19. He stated that in the Digital Mara website page there are no train devices while the Plaintiff’s trademark has a train device. He maintains that the Defendant is offering money transfer service and not advertising services.
20. In re-examination he maintains that Digital Mara does not require a trademark to offer advertisement service because it has a contract with Kenya Railways. And that the Plaintiff’s trademark does not give the him exclusive right to advertise on the train.
21. He testified that the Defendant’s trademark has not infringed on the Plaintiff's trademark, and the trademarks are not similar phonetically as to be capable to cause confusion to the customers.
22. The court directed the parties to file written submission. The Plaintiff filed submissions dated 4th November 2025, while the Defendant filed submissions dated 1st December 2025
Plaintiff submissions
23. The Plaintiff submitted that it is the registered proprietor of Trademark Nos. 99870 and 104791 under Class 35 relating to advertising by branding commuter trains, railway stations and related facilities. The Plaintiff contended that it pioneered the concept of commuter train advertising and that the Defendant unlawfully appropriated those rights by branding M Pesa advertisements both internally and externally on commuter trains without the Plaintiff’s consent or licence.
24. The Plaintiff argued that registration of a trade mark under the Trade Marks Act confers exclusive proprietary rights to use and to prevent unauthorised use of the mark.
25. The Plaintiff contended that the and distinctive element of its registered mark is the train device incorporated in the “Commuter Train Advert” mark and that the Defendant had used that device, or a colorable imitation thereof, in branding Safaricom and M Pesa advertisements displayed on commuter trains. It was asserted that the Defendant holds no trade mark registration authorizing it to conduct commuter train branding under Class 35 and therefore any such use amounted to infringement of the Plaintiff’s registered rights.
26. The Plaintiff maintained that the Defendant’s core business relates to communication and monetary services and not advertising services, and that by branding trains with M-Pesa advertisements, the Defendant unlawfully appropriated the Plaintiff’s advertising trade mark rights protected under the Trade Marks Act.
27. The Plaintiff submitted that unauthorised use of its trademark resulted in loss of sales, loss of profits, loss of business opportunities, dilution of goodwill and trademark distinctiveness, and loss of loyalty in the advertising market.
28. The Plaintiff further contended that the Defendant’s use of the trademark without the Plaintiff’s input undermined its marketing strategy, customer relations, sales processes, and ability to secure advertising opportunities. It was also argued that the Defendant’s substantial M-Pesa transactions should be considered in assessing damages.
29. The Plaintiff urged the Court to find that the Defendant infringed its registered trademark “Commuter Train Advert” incorporating the train device and prayed for permanent injunctive orders, damages, costs, and any other relief the Court deemed fit.
Defendant’s submissions
30. The Defendant submits that the Plaintiff failed to prove trademark infringement under Section 7 of the Trade Marks Act, as no evidence has been adduced before the court to demonstrate that the Defendant used a mark similar or nearly resembling TM Nos. 99870 and 104791 in a way likely to cause confusion.
31. The Defendant submits that the M-Pesa mark is phonetically and visually distinct from the Plaintiff’s device mark and incapable of causing confusion. It was contended that the Plaintiff’s trademark is merely a device mark depicting a train with the words “City Eye Advertising International” and “Commuter Train Advert”.
32. The Defendant submits the Plaintiff conceded in cross-examination that the marks were neither phonetically nor visually similar and did not show the Defendant used the Plaintiff’s device in the SGR branding.
33. The Defendant contended that the Plaintiff had misconstrued the rights conferred by trademark registration. It was argued that a trademark only protects the mark itself and not the underlying services, and that registration under Class 35 does not confer exclusive rights to advertise on commuter trains. The Defendant likened the situation to the “Fanta” and “M-Pesa” brands, which do not confer monopolies over soft drinks or mobile money services respectively. It averred the Plaintiff could not claim monopoly rights over commuter train advertising.
34. The Defendant maintained that the suit was malicious and retaliatory, arising from the Plaintiff’s unsuccessful attempt to secure the advertising contract. It was submitted that the Defendant lawfully chose to work with Digital Mara, the exclusive advertising partner of Kenya Railways Corporation, and that the Plaintiff selectively targeted the Defendant despite other products being advertised on SGR trains.
35. The Defendant further contended that it was not the infringing party since it is a telecommunications company and not an advertising provider. It was argued that Digital Mara, as the advertising service provider engaged by Kenya Railways Corporation, was solely responsible for the SGR advertising campaign. It avers that no permanent injunction should issue without proof of infringement, damages unsupported, and urged the court to dismiss the suit with costs.
Analysis and determination
36. I have carefully considered the pleadings, the evidence tendered, the submissions by the parties and the authorities relied upon. The following issues for determination are:
i. Whether the Plaintiff’s trademarks confer exclusive rights over commuter train advertising services;
ii. Whether the Defendant infringed the Plaintiff’s trademarks; and
iii. Whether the Plaintiff is entitled to the reliefs sought.
37. The law relating to trademark infringement is principally found under Section 7 of the Trade Marks Act, which provides that registration of a trademark confers upon the proprietor the exclusive right to use the mark in relation to the goods or services for which it is registered and that such right is infringed by use of a mark identical with or so nearly resembling it as to be likely to deceive or cause confusion.
38. In the case of Cut Tobacco Kenya Ltd v British American Tobacco (K) Ltd [2001] KECA 369 (KLR) citing with approval Aktiebolaget Jonkoping Vukan Industricksfa – Briksaktiebolag v East Africa
Match Company Ltd [1964] E.A. 62, the Court opined:
“It is for the plaintiff company to prove that there is a resemblance between the two marks, and that such resemblance is deceptive. It is also a well-established principle of law that it is the duty of the judge to decide whether the trademark complained of does so nearly resemble the registered trademark as to be likely to deceive or cause confusion in the minds of the public. From that duty, the judge cannot abdicate.”
39. The established test for trade mark infringement requires proof that the defendant used a mark which is identical or so nearly resembling the plaintiff’s registered mark that it is likely to deceive or cause confusion.
40. Registration protects the mark as registered and not separate constituent elements, particularly where the certificate contains express disclaimers, a proprietor’s rights are circumscribed by the language of the registration and the scope of the class. (See APEDA v Krish Commodities Ltd [2025] KECA 1587 (KLR).
41. From the evidence on record, it is not disputed that the Plaintiff is the registered proprietor of Trademark No. 99870 and Trademark No. 104791. However, the mere registration of a trademark does not automatically confer monopoly rights over an entire category of commercial activity. A trademark protects the mark itself and not the underlying business concept or service generally.
42. The Plaintiff’s trademark certificate expressly contains disclaimers over the exclusive use of the individual words; “commuter”, “train”, “advert”, and the train device separately from the mark as a whole. Consequently, the Plaintiff cannot claim exclusive ownership over all advertising activities conducted on commuter trains merely because the trademark incorporates a train device and the phrase “Commuter Train Advert”.
43. I respectfully agree with that position in Kenya Agricultural and Processed Food Products Development Authority (APEDA) v Krish Commodities Limited [2025] KECA 1587 (KLR) where the Court observed that descriptive or generic terms cannot ordinarily be monopolized and that disclaimers are intended to prevent appropriation of descriptive elements by a single trader.
44. The Plaintiff admitted during cross-examination that the Defendant’s M-Pesa trademark and the Plaintiff’s trademark are not phonetically similar. He further conceded that the M-Pesa trademark is registered in a different class and that the marks are visually distinct.
45. I have looked at the two marks the Defendant’s mark consists principally of the word “M-Pesa” and associated branding. The Plaintiff’s mark, on the other hand, comprises the words “Commuter Train Advert” together with a train device. The plaintiff must prove use by the Defendant of a mark likely to cause confusion. The Plaintiff did not discharge that evidential burden.
46. Upon considering the marks as a whole, I am unable to find any visual, phonetic or deceptive similarity capable of causing confusion among consumers.
47. The Plaintiff’s mark is registered under class 35 (Advertising by branding commuter train with advertising material inside and outside of the train) while the Defendant mark is registered under class 25.
48. The Plaintiff’s claim is substantially premised on the proposition that registration under Class 35 gave him exclusive rights to advertise on trains. With respect, that interpretation is erroneous. Classification under Class 35 merely categorizes the nature of the services for purposes of registration and does not create monopoly rights over all advertising services within that class.
49. Further, no evidence was tendered to demonstrate that the Defendant reproduced or copied the Plaintiff’s registered device mark. The fact that the Defendant advertised its products on trains does not, without more, amount to infringement of the Plaintiff’s trademark rights.
50. The Defendant’s defence that Digital Mara was the party engaged by Kenya Railways to manage SGR advertising, and that the Defendant procured advertising through that agency, raises a further factual point. Even if some elements of train livery gave an overall impression of similarity, the Plaintiff did not prove that Safaricom itself used the Plaintiff’s registered device as a trade mark in the course of trade.
51. The Plaintiff pleaded loss of sales, profits and business opportunities but produced no cogent or quantified evidence linking any asserted loss to the Defendant’s alleged conduct, nor any basis for awarding damages. The law is settled that claims for special damages and commercial losses must be specifically pleaded and strictly proved. (See Kiai t/a High Flyer Services & Publishers & anor v Gichuki t/a high flyer Publishers & Anor [2024] KECA 842) KLR).
52. I further note that the Defendant’s advertising activities were undertaken through Digital Mara pursuant to an arrangement connected with Kenya Railways Corporation. While that fact alone would not absolve the Defendant if infringement were proved, it reinforces the absence of evidence demonstrating unlawful appropriation of the Plaintiff’s registered marks.
53. Ultimately, the Plaintiff failed to establish that the Defendant used a mark identical with or so nearly resembling the Plaintiff’s trademarks as to be likely to deceive or cause confusion within the meaning of Section 7 of the Trade Marks Act.
54. In the circumstances, I find that the Plaintiff has failed to prove his case on a balance of probabilities. The same is dismissed with costs to the Defendant.
JUDGMENT delivered virtually, dated and signed at NAIROBI
This 28th day of May 2026.
P.M. MULWA
JUDGE
In the presence of:
Plaintiff – present in person
Mr. Bett h/b for Mrs. Opiyo for Defendant
Court Assistant: Lispa
i. A permanent injunction restraining the Defendant from using or promoting business associated with Trademark No. 99870 commuter train advert, in class 35.
ii. An award of damages in US Dollars for alleged infringement of the trademark.
iii. Costs and interest in US Dollars.
2. The Plaintiff’s case is that he is the proprietor and director of City Eye Advertising Agency and the registered owner of Trademark No. 99870 “COMMUTER TRAIN ADVERT” in Class 35 which, he alleges, covers advertising services effected by branding commuter trains internally and externally.
3. The Plaintiff avers that the trademark is a service mark protected under the Trade Marks Act, Cap 506, and it comprises both figurative and descriptive elements the dominant feature being a train device together with the words “Commuter Train Advert.” He contends that registration confers upon him the exclusive right to provide and control advertising services of the nature described in Class 35, namely, branding of commuter trains with advertising material.
4. The Plaintiff further alleges that the Defendant, Safaricom PLC, without his authority, branded commuter trains with advertising material promoting the Defendant’s M Pesa product. The Plaintiff asserts that following service of a cease and desist letter the Defendant persisted in the impugned advertising activities.
5. Central to the Plaintiff’s claim is the contention that the Defendant’s train branding employs a device and overall graphic presentation that is identical or confusingly similar to the Plaintiff’s registered mark, such that the Defendant’s use amounts to unlawful exploitation of the Plaintiff’s exclusive rights under the Trade Marks Act. The Plaintiff also pleads that the Defendant is licensed to provide telecommunications and financial services, not the advertising services for which the Plaintiff’s mark is registered, and that the Defendant has thereby derived substantial commercial benefit from advertising to large numbers of train commuters.
6. The Defendant filed the statement of defence dated 19th January 2024 and amended on 21st February 2025 denying the substantive allegations in the Plaint and admits only the descriptive facts as to the parties, putting the Plaintiff to strict proof of the remaining averments. The Defendant has signaled its intention to apply to strike out the suit under Order 2 Rule 15 on the basis that the plaint discloses no reasonable cause of action and constitutes an abuse of process.
7. It avers that, pursuant to section 19 of the Kenya Railways Corporation Act, Kenya Railways Corporation is the sole operator of railway transit systems and, in March 2021, appointed Digital Mara as its exclusive advertising partner. Accordingly, Safaricom lawfully engaged Digital Mara to market its services on the Standard Gauge Railway and did not usurp any exclusive advertising rights claimed by the Plaintiff.
8. The Defendant contends that as a telecommunications provider, it may advertise through any agency of its choice, denies use of the Plaintiff’s trade name, and disputes that Trade Mark No. 99870 confers monopoly rights over all train advertising.
9. It asserts the certificate protects the mark as a whole only, disclaims exclusive use of the individual words and device elements, and that a service mark merely distinguishes services rather than conferring exclusive rights over a category of activity. The Defendant further pleads that the Plaintiff lacked authority from Kenya Railways to provide train advertising, challenges this Court’s jurisdiction, and maintains the suit is speculative. It therefore prays for dismissal with costs.
Evidence
10. At the hearing, the Plaintiff and the Defendant each called one witness.
11. Zakayo Muchai Wainaina testified as Pw1. He testified that he is the proprietor of City Eye Advertising Agency and adopted his witness statement and list of documents, both dated 10th July 2023 and the further list of documents dated 2nd March 2025 as his evidence in chief. He testified that he registered trademark No. 99870 and No. 100791. He avers that the Defendant branded their product on commuter trains in total infringement of his trademark.
12. In cross-examination by Mr. Opiyo he testified that his business is in Maua Meru County. He states that the Trade Mark ZWM2 is a service mark and covers both the trademark itself and the service. He states the trademark is figurative. He testified that there are the words “COMMUTER TRAIN ADVERT” and a photo of the Train.
13. He contended that the Registrar states that he does not have exclusive right to all the words and the picture of the “Train”.
14. He stated that the Trademark for M-pesa is a word mark. That his trademark Certificate and that of M-pesa certificate are not the same as they are registered in different classes, the Train is a figurative trademark while his was an advertisement outside and inside the train.
15. He stated that the two trademarks are not phonetically similar, though the similarity is what the Defendant advertises. He maintains that his trademark gives him the right to advertise on the train and in Kenya. That Section 7 of the Trademarks Act gives him exclusive rights. That it is a property service and he is the only one with the exclusive rights to advertise on the train.
16. Dw1 - Cerere Kihoro, is the legal counsel for Technology & Corporate Center at Safaricom. He adopted his witness statement, list of documents and further list of documents all dated 8th October 2025.
17. In cross examination, he testified that the Defendant has a trade mark which allows them put up an M-pesa branding where they have an agreement. That the Defendant has an agreement with Kenya Railways through Digital Mara to advertise on the commuter train.
18. He further testified that the Trademark is registered in Class 25 which comprises of money transfer services and not advertisement services. And that Defendant did not have a trademark certificate with Kenya Railways for advertisement inside and outside the train.
19. He stated that in the Digital Mara website page there are no train devices while the Plaintiff’s trademark has a train device. He maintains that the Defendant is offering money transfer service and not advertising services.
20. In re-examination he maintains that Digital Mara does not require a trademark to offer advertisement service because it has a contract with Kenya Railways. And that the Plaintiff’s trademark does not give the him exclusive right to advertise on the train.
21. He testified that the Defendant’s trademark has not infringed on the Plaintiff's trademark, and the trademarks are not similar phonetically as to be capable to cause confusion to the customers.
22. The court directed the parties to file written submission. The Plaintiff filed submissions dated 4th November 2025, while the Defendant filed submissions dated 1st December 2025
Plaintiff submissions
23. The Plaintiff submitted that it is the registered proprietor of Trademark Nos. 99870 and 104791 under Class 35 relating to advertising by branding commuter trains, railway stations and related facilities. The Plaintiff contended that it pioneered the concept of commuter train advertising and that the Defendant unlawfully appropriated those rights by branding M Pesa advertisements both internally and externally on commuter trains without the Plaintiff’s consent or licence.
24. The Plaintiff argued that registration of a trade mark under the Trade Marks Act confers exclusive proprietary rights to use and to prevent unauthorised use of the mark.
25. The Plaintiff contended that the and distinctive element of its registered mark is the train device incorporated in the “Commuter Train Advert” mark and that the Defendant had used that device, or a colorable imitation thereof, in branding Safaricom and M Pesa advertisements displayed on commuter trains. It was asserted that the Defendant holds no trade mark registration authorizing it to conduct commuter train branding under Class 35 and therefore any such use amounted to infringement of the Plaintiff’s registered rights.
26. The Plaintiff maintained that the Defendant’s core business relates to communication and monetary services and not advertising services, and that by branding trains with M-Pesa advertisements, the Defendant unlawfully appropriated the Plaintiff’s advertising trade mark rights protected under the Trade Marks Act.
27. The Plaintiff submitted that unauthorised use of its trademark resulted in loss of sales, loss of profits, loss of business opportunities, dilution of goodwill and trademark distinctiveness, and loss of loyalty in the advertising market.
28. The Plaintiff further contended that the Defendant’s use of the trademark without the Plaintiff’s input undermined its marketing strategy, customer relations, sales processes, and ability to secure advertising opportunities. It was also argued that the Defendant’s substantial M-Pesa transactions should be considered in assessing damages.
29. The Plaintiff urged the Court to find that the Defendant infringed its registered trademark “Commuter Train Advert” incorporating the train device and prayed for permanent injunctive orders, damages, costs, and any other relief the Court deemed fit.
Defendant’s submissions
30. The Defendant submits that the Plaintiff failed to prove trademark infringement under Section 7 of the Trade Marks Act, as no evidence has been adduced before the court to demonstrate that the Defendant used a mark similar or nearly resembling TM Nos. 99870 and 104791 in a way likely to cause confusion.
31. The Defendant submits that the M-Pesa mark is phonetically and visually distinct from the Plaintiff’s device mark and incapable of causing confusion. It was contended that the Plaintiff’s trademark is merely a device mark depicting a train with the words “City Eye Advertising International” and “Commuter Train Advert”.
32. The Defendant submits the Plaintiff conceded in cross-examination that the marks were neither phonetically nor visually similar and did not show the Defendant used the Plaintiff’s device in the SGR branding.
33. The Defendant contended that the Plaintiff had misconstrued the rights conferred by trademark registration. It was argued that a trademark only protects the mark itself and not the underlying services, and that registration under Class 35 does not confer exclusive rights to advertise on commuter trains. The Defendant likened the situation to the “Fanta” and “M-Pesa” brands, which do not confer monopolies over soft drinks or mobile money services respectively. It averred the Plaintiff could not claim monopoly rights over commuter train advertising.
34. The Defendant maintained that the suit was malicious and retaliatory, arising from the Plaintiff’s unsuccessful attempt to secure the advertising contract. It was submitted that the Defendant lawfully chose to work with Digital Mara, the exclusive advertising partner of Kenya Railways Corporation, and that the Plaintiff selectively targeted the Defendant despite other products being advertised on SGR trains.
35. The Defendant further contended that it was not the infringing party since it is a telecommunications company and not an advertising provider. It was argued that Digital Mara, as the advertising service provider engaged by Kenya Railways Corporation, was solely responsible for the SGR advertising campaign. It avers that no permanent injunction should issue without proof of infringement, damages unsupported, and urged the court to dismiss the suit with costs.
Analysis and determination
36. I have carefully considered the pleadings, the evidence tendered, the submissions by the parties and the authorities relied upon. The following issues for determination are:
i. Whether the Plaintiff’s trademarks confer exclusive rights over commuter train advertising services;
ii. Whether the Defendant infringed the Plaintiff’s trademarks; and
iii. Whether the Plaintiff is entitled to the reliefs sought.
37. The law relating to trademark infringement is principally found under Section 7 of the Trade Marks Act, which provides that registration of a trademark confers upon the proprietor the exclusive right to use the mark in relation to the goods or services for which it is registered and that such right is infringed by use of a mark identical with or so nearly resembling it as to be likely to deceive or cause confusion.
38. In the case of Cut Tobacco Kenya Ltd v British American Tobacco (K) Ltd [2001] KECA 369 (KLR) citing with approval Aktiebolaget Jonkoping Vukan Industricksfa – Briksaktiebolag v East Africa
Match Company Ltd [1964] E.A. 62, the Court opined:
“It is for the plaintiff company to prove that there is a resemblance between the two marks, and that such resemblance is deceptive. It is also a well-established principle of law that it is the duty of the judge to decide whether the trademark complained of does so nearly resemble the registered trademark as to be likely to deceive or cause confusion in the minds of the public. From that duty, the judge cannot abdicate.”
39. The established test for trade mark infringement requires proof that the defendant used a mark which is identical or so nearly resembling the plaintiff’s registered mark that it is likely to deceive or cause confusion.
40. Registration protects the mark as registered and not separate constituent elements, particularly where the certificate contains express disclaimers, a proprietor’s rights are circumscribed by the language of the registration and the scope of the class. (See APEDA v Krish Commodities Ltd [2025] KECA 1587 (KLR).
41. From the evidence on record, it is not disputed that the Plaintiff is the registered proprietor of Trademark No. 99870 and Trademark No. 104791. However, the mere registration of a trademark does not automatically confer monopoly rights over an entire category of commercial activity. A trademark protects the mark itself and not the underlying business concept or service generally.
42. The Plaintiff’s trademark certificate expressly contains disclaimers over the exclusive use of the individual words; “commuter”, “train”, “advert”, and the train device separately from the mark as a whole. Consequently, the Plaintiff cannot claim exclusive ownership over all advertising activities conducted on commuter trains merely because the trademark incorporates a train device and the phrase “Commuter Train Advert”.
43. I respectfully agree with that position in Kenya Agricultural and Processed Food Products Development Authority (APEDA) v Krish Commodities Limited [2025] KECA 1587 (KLR) where the Court observed that descriptive or generic terms cannot ordinarily be monopolized and that disclaimers are intended to prevent appropriation of descriptive elements by a single trader.
44. The Plaintiff admitted during cross-examination that the Defendant’s M-Pesa trademark and the Plaintiff’s trademark are not phonetically similar. He further conceded that the M-Pesa trademark is registered in a different class and that the marks are visually distinct.
45. I have looked at the two marks the Defendant’s mark consists principally of the word “M-Pesa” and associated branding. The Plaintiff’s mark, on the other hand, comprises the words “Commuter Train Advert” together with a train device. The plaintiff must prove use by the Defendant of a mark likely to cause confusion. The Plaintiff did not discharge that evidential burden.
46. Upon considering the marks as a whole, I am unable to find any visual, phonetic or deceptive similarity capable of causing confusion among consumers.
47. The Plaintiff’s mark is registered under class 35 (Advertising by branding commuter train with advertising material inside and outside of the train) while the Defendant mark is registered under class 25.
48. The Plaintiff’s claim is substantially premised on the proposition that registration under Class 35 gave him exclusive rights to advertise on trains. With respect, that interpretation is erroneous. Classification under Class 35 merely categorizes the nature of the services for purposes of registration and does not create monopoly rights over all advertising services within that class.
49. Further, no evidence was tendered to demonstrate that the Defendant reproduced or copied the Plaintiff’s registered device mark. The fact that the Defendant advertised its products on trains does not, without more, amount to infringement of the Plaintiff’s trademark rights.
50. The Defendant’s defence that Digital Mara was the party engaged by Kenya Railways to manage SGR advertising, and that the Defendant procured advertising through that agency, raises a further factual point. Even if some elements of train livery gave an overall impression of similarity, the Plaintiff did not prove that Safaricom itself used the Plaintiff’s registered device as a trade mark in the course of trade.
51. The Plaintiff pleaded loss of sales, profits and business opportunities but produced no cogent or quantified evidence linking any asserted loss to the Defendant’s alleged conduct, nor any basis for awarding damages. The law is settled that claims for special damages and commercial losses must be specifically pleaded and strictly proved. (See Kiai t/a High Flyer Services & Publishers & anor v Gichuki t/a high flyer Publishers & Anor [2024] KECA 842) KLR).
52. I further note that the Defendant’s advertising activities were undertaken through Digital Mara pursuant to an arrangement connected with Kenya Railways Corporation. While that fact alone would not absolve the Defendant if infringement were proved, it reinforces the absence of evidence demonstrating unlawful appropriation of the Plaintiff’s registered marks.
53. Ultimately, the Plaintiff failed to establish that the Defendant used a mark identical with or so nearly resembling the Plaintiff’s trademarks as to be likely to deceive or cause confusion within the meaning of Section 7 of the Trade Marks Act.
54. In the circumstances, I find that the Plaintiff has failed to prove his case on a balance of probabilities. The same is dismissed with costs to the Defendant.
JUDGMENT delivered virtually, dated and signed at NAIROBI
This 28th day of May 2026.
P.M. MULWA
JUDGE
In the presence of:
Plaintiff – present in person
Mr. Bett h/b for Mrs. Opiyo for Defendant
Court Assistant: Lispa