A judge has set aside a magistrate's order requiring telecommunication operator Airtel Kenya to pay media personality Willis Raburu Sh6.5 million as damages for the usage of a disputed trademark dubbed 'BAZU', ruling that the magistrate lacked authority to determine the dispute.
Justice Linus Kassan, in a verdict that highlighted procedural discrepancies in court filings, said the case should have been handled by the High Court as provided in the Trademark Act; hence, the magistrate's judgment was void.
Interestingly, Mr Raburu had filed the case in 2023 at the High Court. Still, another judge ordered its transfer to the magistrate's court on the grounds that the subordinate court was the appropriate forum.
The heart of his case was that Airtel was using his registered trademark 'BAZU' without authority in marketing and promotion of internet bundle products, a claim that the company denied and said the phrase was in common use in Kenya prior to registration by Mr Raburu.
Willis ‘Bazu’ Raburu during a past perfomance.
Photo credit: Pool
He attained registration of the trademark on April 13, 2021, while Airtel Kenya started using the same to promote its internet products on December 16, 2022. Denying the alleged infringement, Airtel contended that there was a difference between ‘BAZU’ and ‘BAZU’ bundles.
However, Justice Kassan did not make a determination on whether Airtel infringed Mr Raburu's rights but only ruled on the issue of the jurisdiction, stating that the magistrate erred in handling the dispute.
"A reading of Section 2, 5, 7, 8 & 49 of the Trademark Act, the purport and intent of the drafters of the Act was that any issue concerning trademarks that was attendance to the Court meant the High Court and not the Subordinate Court," said Justice Kassan.
He said that while the matter was transferred by the High Court to the magistrate court, the same appears to have been an inadvertent omission of the court.
Nevertheless, Justice Kassan faulted the trial magistrate for entertaining the dispute even though the same had been transferred from a superior court.
Airtel headquarters along Mombasa Road, Nairobi.
Photo credit: Dennis Onsongo | Nation Media Group
This is because any court’s jurisdiction flows from either the Constitution or legislation, or both.
"It was necessary of the trial court to interrogate the appellant’s (Airtel) objection concerning jurisdiction whereas it manifestly failed to do so on the face of the impugned decision," ruled the judge, striking out the case.
He said: “Such an omission must be faulted vide this instant appeal given this court earlier finding that the purport and intent of the drafters of the Trademark Act was that any live issue concerning trademarks that was referenced to a court meant a High Court and not subordinate court.”
Airtel filed an appeal after senior principal magistrate Rawlings Musiega, in the judgment dated March 11, 2024, found that Mr Raburu is the sole proprietor and owner of the trademark ‘BAZU’.
Willis Raburu is a media personality with more than 10 years' experience. He is currently a show host at TV47.
Photo credit: Pool
The magistrate ruled that Mr Raburu was consequently entitled to the exclusive use of the mark in relation to goods for which it is registered.
However, Airtel contended that the magistrate erred; first in dealing with the case and secondly in the findings.
"The magistrate erred in law and in fact when he held that the High Court by independently transferring the matter to the Magistrate Court then the Magistrate Court had obtained the requisite jurisdiction to determine the matter," said the company.
Arguing that the magistrate was not supposed to take direction on jurisdiction from another court, the company stated that, according to the Trademark Act, any dispute touching on infringement of a registered trademark is supposed to be handled by the Registrar of Trademarks and the High Court.
It added that the magistrate failed to consider its defence and evidence of prior use and common use of the alleged trademark name/phrase ‘BAZU’ in Kenya.
"The term/phrase ‘BAZU’ is widely used and is familiar with public domain especially the youth speaking the ‘sheng’ dialect therefore the respondent (Raburu) cannot restrict its use whether for business or otherwise," Airtel stated.
Airtel argued that there was a distinction between the 'BAZU' and 'BAZU' bundles.
Photo credit: Pool
Airtel argued that common-use terms and descriptive expressions should not be trademarked and questioned the Registrar’s oversight in approving the registration.
"The appellant (Airtel) produced evidence showing that the term ‘BAZU’ was a phrase in the ‘sheng’ dialect meaning someone/something big and or a loss," it stated.
But the magistrate found that Mr Raburu had proved his case that the telecommunication network firm was liable for infringement and passing off the brand name ‘BAZU’.
The trial court considered his evidence that, following the registration of the trademark, he continued to provide promotional and advertising services to various organisations, including a betting company under the brand name ‘BAZU’.
Mr Raburu alleged that the general public had created a perception that he had endorsed Airtel Kenya following the use of the term ‘BAZU’ within their promotional internet bundle.
"I therefore find that the defendant (Airtel Kenya) continued to use the plaintiff’s trademark in a manner that might have led the public to believe that those two parties had entered into an endorsement agreement," said the magistrate.
