Court of Appeal denies protection to single colour

In British American Tobacco Kenya Ltd v Cut Tobacco Kenya Ltd, the Court of Appeal has held that there can be no proprietary rights in a particular colour and, in general, in words that are descriptive of goods.

British American Tobacco Kenya Ltd and Cut Tobacco Kenya Ltd manufactured two competing brands of cigarettes under the marks SPORTSMAN and HORSEMAN, respectively. British American Tobacco filed suit, arguing that Cut:

• had infringed its SPORTSMAN trademark by using a deceptive imitation of the get-up and configuration of its packaging; and
  
  
• was passing off its brand of cigarettes as being those of, or associated with, British American Tobacco.

Initial relief was obtained (in British American Tobacco's favour) within five months of filing the action in March 1999. After the initial hearing, British American Tobacco placed into court security for costs amounting to KSh20 million ($275,000). The action appears to have been argued using the typical procedure, with four witnesses being cross-examined in court. In some African countries, it is possible to hear this type of case on the papers alone, principally to speed up decision making.

Cut filed an appeal in 2000, which was heard at separate sittings in 2001 and 2002. A decision was granted in favour of Cut in July 2002. British American Tobacco appealed to the Court of Appeal.

The appellate court agreed with the earlier conclusion that:

"the use of the colour red as the predominant colour on a packet of cigarettes is not the exclusive preserve of anybody, including the plaintiff, the colour being a conventional indicator in the tobacco industry of a strong brand of cigarettes."

The court also agreed that having regard to all the different characteristics of the packets (particularly the principal colours), there was no likelihood that consumers would be deceived by the appearance of the two packets.

The eventual outcome is not surprising because cases involving get-up or trade dress are rarely won without significant evidence showing a likelihood of confusion. Arguably, British American Tobacco's first victory in 1999 gave it sufficient time to secure market share over Cut while the case was pending appeal.

The case contains an interesting analysis of how the laws of trademark infringement and passing off are applied in Kenya, as well as an insight into Kenya's court procedure. Unsurprisingly, some reference was made to English law.

Darren Olivier, Bowman Gilfillan Inc, London