DISSOLUTION OF A COMPANY AS A REMEDY FOR TRADE MARK INFRINGEMENT

By Effie Omondi,Terry Mwango,John Syekei Wednesday, February 05, 2020
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Recently, a Gazette Notice was issued highlighting the dissolution of Landor and Associates Limited by the Registrar of Companies.

This Notice was issued following the High Court decision in Civil Suit No. 266 of 2015Landor LLC and WPP Luxembourg Gamma Sarl v Wagude Lui t/a Landor and Associates and 2 others in which Bowmans acted for the Plaintiffs, Landor LLC and WPP Luxembourg Gamma Sarl. In this case, Bowmans successfully proved the Plaintiffs’ claim that the Defendants’ business and company names (“infringing names”) were infringing upon the Plaintiffs’ trade mark ‘Landor’.  By the Judgment of the Court issued on 25th January 2019, the Defendants were ordered to change the infringing names within 90 days from the date of delivery of the judgment.

Despite the Court Order and several demands, the Defendants did not change their infringing names as ordered. This prompted Bowmans to initiate the process of striking out the infringing names from the Companies Register on behalf of the Plaintiffs.

The Process

The process commenced by a petition through a letter addressed to the Registrar of Companies (“Registrar”) and lodged at the Companies Registry. This letter notified the Registrar of the Court Order, highlighted the Defendants’  infringing names and requested the Registrar to exercise its powers under section 49 (1) (c) and 58 of the Companies Act.  No. 17 of 2015 (the “Companies Act”), Regulation 12 (f) of the Companies (General) Regulations, 2015 (“Rules”) and section 17 of the Registration of Business Names Act, Chapter 499 of the Laws of, to strike off the Defendants’ infringing names from the registers.

Upon receiving the Plaintiffs’ petition, the Registrar wrote to the Defendants requiring them to change the infringing names within 90 days. The Defendants did not respond to the Registrar’s letter and the Registrar issued a second and final letter to the Defendants. In view of the final letter, Landor and Associates Limited was dissolved and a Gazette Notice was issued on this dissolution.

What this decision means

Due to the independence of the Companies registry and the Trade Marks registry, conflicts arise where business and/or company names registered are closely similar or identical to registered trademarks. The High Court’s judgment and the decision by the Registrar (“the Decisions”) is a welcome relief for proprietors of registered trademarks, who find that there are business and company names resembling/closely resembling their trade marks. These Decisions highlight the rights of such trade mark proprietors with prior rights over companies/business names with similar/closely similar names.  Where such infringement by a company or business is found, then the dissolution of that company is an option to consider as a long term solution.

In conclusion, we recommend conducting a company name search and a trade mark search where a client intends to register either a company name or a trade mark to avoid infringement claims. Ultimately, linking of the two independent databases from these registries may be considered so that one search is conducted to provide results of existing trade marks and company names.