A commentary on Buupass Kenya Limited v Buspass Kenya Limited; Registrar of Companies (Interested Party) (Commercial Case E144 of 2021) [2024] KEHC 9257 (KLR) (Commercial and Tax) (30 July 2024) (Judgment) – Kenya Law.
Imagine walking into a supermarket, searching for your favourite brand, only to stumble upon a strikingly similar name and imitation. You’re confused, unsure if it’s the same trusted business or a clever imitation. This is the heart of the legal battle between Buupass Kenya Limited and Buspass Kenya Limited, a case that not only pits two companies against each other but also raises critical questions about intellectual property rights in Kenya.
In a landmark judgment delivered on 30th July 2024, the High Court of Kenya reaffirmed the supremacy of trademark rights over company names, sending a clear message to businesses and regulatory bodies alike. This case is more than just a corporate dispute; it’s a lesson in branding, consumer trust, and the importance of protecting intellectual property in a competitive market.
The Clash of the Titans: Buupass VS. Buspass
The story begins in 2016 when Buupass Kenya Limited was established, offering online ticketing services. By 2017, Buupass had secured a registered trademark for its name and logo, solidifying its brand identity in Kenya’s digital marketplace. Fast forward to 2020, and along comes Buspass Kenya Limited, a new player offering similar services under a name that sounded and looked eerily similar to Buupass.
Buupass cried foul, claiming that the similarity was causing public confusion and harming its business. Despite complaints to the Registrar of Companies, which advised Buspass to change its name, the latter stood its ground, arguing that its name was distinct and unlikely to cause confusion.
The Court’s Judgement
Presided over by Honourable Justice Njoki Mwangi, the court delivered a verdict that sent ripples through Kenya’s business and legal communities. Here’s what the court found:
1. Trademark Infringement: The court applied the four tests under Section 7 of Kenya’s Trademarks Act and concluded that Buspass had indeed infringed on Buupass’s trademark. The similarities in name, sound, and appearance were deemed likely to deceive or confuse consumers.
2. Passing Off: The court also found that Buspass’s use of a similar name had misled customers, effectively piggybacking on Buupass’s established goodwill. This tort, designed to protect businesses from competitors capitalizing on their reputation, was a key factor in the ruling.
The court didn’t hold back in its remedies:
a) A permanent injunction preventing Buspass from using the name.
b) An order for Buspass to change its name and destroy all materials bearing the disputed name.
c) Damages awarded to Buupass and an account of profits to recover any financial gains Buspass made from the infringement.
Lessons For Businesses and Consumers
For businesses, this case is a wake-up call to:
a) Conduct thorough trademark searches before registering a company name.
b) Invest in protecting your intellectual property from the outset.
c) Be proactive in enforcing your rights if infringement occurs.
For consumers, it’s a reminder to stay vigilant. Confusingly similar names can lead to unintended purchases or support for the wrong brand. Always double-check to ensure you’re engaging with the business you trust.
So, the next time you see two brands with strikingly similar names, remember this case. It’s not just about names—it’s about trust, reputation, and the integrity of Kenya’s business landscape.
Authored by George Laichena Intellectual Property Lead at MMW Legal
Edited by Stella Muraguri Managing Partner- MMW Advocates LLP
At MMW Legal, we specialize in navigating the complex world of intellectual property, helping businesses protect their brands, trademarks, and innovations. Whether you’re a startup or an established enterprise, safeguarding your intellectual assets is crucial in today’s competitive landscape