MasiboLaw

In Kenya’s fast-paced digital and marketing world, a catchy slogan or phrase can build a brand overnight. However, using someone else’s trademarked phrase—whether knowingly or unknowingly—can also carry serious legal consequences, including fines worth millions.

The recent High Court Decision in Airtel Kenya Networks Limited v. Willis Raburu offers a critical lesson for businesses regarding trademark protection and the importance of filing cases in the correct court.

Case Background: Willis Raburu vs. Airtel Kenya

Media personality Willis Raburu sued Airtel Kenya Networks Limited for allegedly using his registered trademark “BAZU” to promote Airtel’s internet bundles. According to media reports, Raburu’s mark was registered under Classes 25, 35, and 38 of the Trademarks Act (Cap 506).

A Magistrate’s Court found Airtel guilty of trademark infringement and passing off, awarding Raburu over Ksh 6.5 million in damages and issuing injunctions against the use of the mark.

Airtel appealed, contending the Magistrate’s Court lacked jurisdiction to determine disputes over registered trademarks. The High Court, in a judgment delivered by Justice L.P. Kassan, agreed: only the High Court or the Registrar of Trademarks may determine such matters under Sections 2, 51 and 53 of the Trademarks Act.

The trial judgment was entirely struck out—not on the merits of the trademark claim—but on jurisdictional grounds.

Why This Decision Matters

This judgment highlights a fundamental procedural issue in Kenyan litigation: jurisdiction. As held in the landmark case Owners of the Motor Vessel “Lillian S” v Caltex Oil (Kenya) Ltd, “jurisdiction is everything.”

In that case, the Court of Appeal held:

“Where a Court has no jurisdiction, there would be no basis for continuing proceedings.”

For businesses seeking to protect their brands in Kenya, this means that even an otherwise strong case for trademark infringement or passing off can collapse if filed in the wrong court.

Key Takeaways for Kenyan Businesses

1. File in the correct court/tribunal. Trademark disputes involving registered marks fall under the jurisdiction of the High Court (or the Registrar of Trademarks) pursuant to the Trademarks Act. The lower court’s decision was invalidated purely because it was heard by a Magistrate’s Court rather than the High Court.

2. Conduct brand searches early. Before launching a product, marketing campaign, or slogan, perform a search through the Kenya Industrial Property Institute (KIPI) to ensure your phrase or slogan isn’t already registered.

3. Register before use. Under Section 7 of the Trademarks Act, legal protection is only granted to registered trademarks—not simply to those in use.

4. Procedural errors cost dearly. A procedural misstep like wrong venue or mis-filing can undo months—or even years—of brand‐building, incur heavy legal costs, and damage your reputation.

Why Your Business Should Care

In the digital era, slogans, catch-phrases, hashtags, and even colloquial terms can become powerful brand assets. But they also become intellectual property liabilities if not properly protected. Without appropriate registration and venue choice, your brand might be vulnerable to:

• Infringement claims by competitors or personalities
• Passing‐off actions (which can damage brand goodwill)
• Expensive litigation that may be dismissed for procedural misfiling

Protect Your Brand with Expert Legal Guidance

At MasiboLaw LLP , we assist Kenyan businesses with:

• Registering and protecting trademarks under Kenyan and regional IP laws
• Responding to infringement claims and defending brand reputation
• Advising on venue, jurisdiction, and procedural compliance in IP disputes
• Handling litigation before the High Court and the Registrar of Trademarks

Don’t leave your brand to chance. Let us help you build, register, and defend your intellectual property proactively. You can reach us on info@masibolaw.co.ke