Solar and asset financing firm M-Kopa has won a trademark fight against a former agent who established a business under a similar brand name.
High Court judge Peter Mulwa said that John Waweru Njenga infringed on the M-Kopa trademark name by establishing a firm under the name M-Kopo Kastomer Care and Accessories.
“Having considered the names "M-Kopo Kastomer Care and Accessories" and "M-Kopa Kenya Limited," I note a striking similarity between them. In my view, the average consumer may not immediately discern the difference between the two and may, therefore, be led to believe that both represent the same product or service” the judge said.
Justice Mulwa said that a review of evidence showed that M-Kopo Kastomer Care and Accessories also used M-Kopa’s logo in advertising its services without authorisation.
“These acts constitute trademark infringement, as it creates a likelihood of confusion among the plaintiff's customers and undermines the plaintiff's exclusive rights to its mark. It dilutes the distinctiveness of the plaintiff's brand and misleads the public into believing that the defendant’s business is affiliated with or authorised by the plaintiff, which is not the case.”
M-Kopa Kenya operates as an asset finance company, offering a variety of products, including smartphones, which are sold to customers on credit through a model known as “pay-as-you-go”.
The M-Kopa trademark was assigned to the firm by Mobile Venture Kenya Limited on August 31, 2015, and was later renewed on May 18, 2021.
M-Kopa filed a suit against Mr Njenga on August 29, 2023, and sought orders against him for infringement of trademark and passing off.
Justice Mulwa said M-Kopa proved its case against its former agent and ordered him to permanently desist from abusing the trademark.
“I therefore enter judgement for the plaintiff against the defendant as follows: a. A permanent injunction be and is hereby issued restraining the defendant, whether by himself, his servants, employees, representatives, and/or agents from using the words "M-KOPO" and/or any confusing or deceptive mark that is similar or substantially similar to the plaintiff’s trademark in selling, vending or distributing products through retail or wholesale,” the judge said.
“A permanent injunction be and is hereby issued to restrain the Defendant, whether by himself, his servants, employees, representatives, and/or agents from passing off the Defendant's products/smartphones as those affiliated with the Plaintiff” the judge added.
The court also ordered Mr Njenga to remove, take down, destroy, demolish, and/or withdraw all advertisements bearing the trademark "M-KOPA" or "M-KOPO".
“An order of enquiry is issued for accounts and forensic audit order to determine the profits earned by the Defendant’s use of the infringed trademark and the defendant to pay all sums found due upon the completion of such enquiry and account,” Justice Mulwa said.
