Vaseline, Smirnoff risk removal from trademark registry

More than 2,000 products, including global brands such as Vaseline, Smirnoff and Total Gas, risk losing their market protection in Kenya following the expiry of their trademark licences.

The Kenya Industrial Property Institute (Kipi), the custodian of trademarks in the country, said it would clear 2,162 products from its register if their owners fail to renew their respective trademark licences by next Wednesday.

“Where no application for renewal of a trademark published herein is received within 30 days from the date of this publication, the trade mark shall be forthwith removed from the Register of Trade Marks,” John Onyango, the acting managing director at Kipi, said in a notice on June 15, adding that the proprietors of the affected marks have until July 15 to renew them.

A review of the notice by Kipi shows that several global brands risk being affected by the register clean-up. They include Colgate registered by Colgate-Palmolive; Vaseline by Unilever; Hostess flour by Unga Limited; and Total Gas and Total Gaz by Total.

Others are Hennessy and Hennessy Cognac by Societe Jas Hennessy and Company, and Philips by NV Philips Loeilampenfabrieken Vas.

Once removed, firms can apply to have the trademarks reinstated at Kipi’s discretion, raising fears that the firms could be exposed to counterfeited goods.

“The trademark shall then be restored to the Register of Trademarks upon being satisfied that it is just to do so and upon imposing such conditions as the registrar may deem fit,” said Mr Onyango.

A trademark registration is valid for 10 years from the date of application, according to the Trademarks Act.

Six months prior to the expiry of the 10 years, the registrar is required by law to notify the owner of the trademark of the imminent expiry.

When a trademark is registered with the Kenyan Trade Marks Office, it accords protection in Kenya only.

Registration of a trademark gives a proprietor direct evidence of exclusive ownership and helps keep off potential infringers who may try to ride on the goodwill of one’s mark.

In 2016, Apple lost a trademark fight in China, meaning a firm which sells handbags and other leather goods was allowed to continue to use the name “IPHONE”.

Xintong Tiandi trademarked “IPHONE” for leather products in China in 2010, but Apple filed a trademark bid for the name for electronic goods in 2002, but it was not approved until 2013.

The Chinese court ruled that Apple could not prove it was a well-known brand in China before Xintong Tiandi filed its trademark application in 2007.

The notice says some of those trademarks expired years ago. For instance, the Colgate trademark is stated to have expired in 1998, Vaseline (2008), Hostess (2008); Total Gas (2010) Hennessy (1981) and Philips (1983).

Other expired trademarks are Pepsi registered by Pepsi Co that expired in 1998, Smirnoff registered by Guinness UDV North America, (expired 2017), Skoda by the Czech company Koncernovy Podnik (2009), IBM by American company International Business Machines Corporation that is said to have expired in 1980.

The roll also includes trademarks by Pegasus that expired in 1976, Finlay’s by James Finlay and Company Limited (expired 1993), BP (2007), Martini by Barcadi and Company Limited (2008), Sellotape by Adhesive Company Limited (1980), and Citroen (1982).

A number of trademarks in the Kipi list are, however, of products that are out of the market such as Softa by Kiguru Food Complex that expired in 2008 — or those that were trademarked by overseas companies to protect against any trademark abuse in Kenya. Others have had their parent companies change ownership.