Wakilii

In Re - of an Appliaction for Registration of a Trade Mark, No 24 of 1929 by the Firestone Tire and Rubber Co. of Ohio, U.S.A.; In Re - of the Registration of Trade Marks Ordinance Chapter 89 Revised Edition of he Laws of Kenya, Section 7

East African Court of Appeal · [1929] KenyaHC 134 Application Granted AI-generated summary ↓ Download Pin to watchlist Add to matter
Jurisdiction
Uganda
Case Type
Application to the High Court for an order deeming a mark distinctive under the Registration of Trade Marks Ordinance following refusal by the Registrar of Trade Marks
Decision
Application for trade mark registration allowed to proceed

Observed later treatment

No later-treatment classification is recorded for this judgment.

Citator coverage is limited to judgments in the Wakilii corpus and source-matched treatment records. Absence of a signal is not an assertion that the case remains good law.

AI-generated summary. This summary was generated by AI from the full text of the judgment. It may contain errors or omissions—always read the source judgment before relying on it.

Holding

Held that in a young colony like Kenya, the same rigid rules as to user of trade marks as in older, more established communities cannot be insisted upon. The word "Gum-Dipped" was deemed a distinctive mark under section 7(5) of the Registration of Trade Marks Ordinance, allowing the application to proceed to registration, notwithstanding limited user compared to English cases, as the mark was not commendatory, would not deceive the public, and had shown growing use.

Outcome

Application for trade mark registration allowed to proceed

Facts

The Firestone Tire and Rubber Company of Ohio applied to register the word "Gum-Dipped" as a trade mark for tyres in Kenya. The Registrar of Trade Marks refused the application on the basis that it did not meet the requirements of section 7 of the Registration of Trade Marks Ordinance and no court order had been obtained under subsection 5. Between July 1924 and March 1929, 5,083 tyres bearing the "Gum-Dipped" mark were shipped to Kenya, valued at 251,000 dollars, distributed through J.R. Cox and Company, Twentsche Overzee Handel Maatschappij, York Garages Nairobi, and Nyanza Garages. Between March and August 1929, J.R. Cox imported tyres worth 433,459 shillings and sold approximately 375,000 shillings worth. The mark referred to a manufacturing process involving impregnation of tyre fabric cords with rubber, not dipping the tyre itself in gum. The applicant admitted the word was not within the automatic registration categories and had not been registered in England.

Issues

  1. Whether the word "Gum-Dipped" is a distinctive mark adapted to distinguish the applicant's goods under section 7(5) of the Registration of Trade Marks Ordinance.
  2. Whether the extent of user of the trade mark in Kenya Colony is sufficient to render it distinctive in fact for the purposes of trade mark registration.

Orders

  • Application allowed to proceed to the second stage of registration.
  • No costs of the application.

Rules and key headnotes

Trade Marks — Distinctiveness — Standard of User in Young Colonies
In a young colony the same rigid rules as to user of a trade mark as are insisted upon in older, more firmly established and more highly organised communities cannot be applied. Evidence of user over a number of years with recent growth may suffice even where the volume of trade is relatively limited.
Trade Marks — Distinctiveness — Non-Commendatory or Descriptive Terms
A mark that is not commendatory to the public, does not deceive, and is not desired by competitors may be deemed distinctive under section 7(5) of the Registration of Trade Marks Ordinance even if it is not within the automatic registration categories, where user has rendered it distinctive in fact.
Trade Marks Ordinance — Court's Discretion Under Section 7(5)
Under section 7(5) of the Registration of Trade Marks Ordinance, the Court may take into consideration the extent to which actual user has rendered a mark distinctive in fact for the goods with respect to which it is proposed to be registered, and may order that the mark be deemed distinctive.

Legislation cited (2)

  • Registration of Trade Marks Ordinance Chapter 89 s.7
  • Registration of Trade Marks Ordinance Chapter 89 s.7(5)

Cases cited (3)

  • W. & G. Du Cros Limited [1912] 1 Ch D 644
  • Joseph Crosfield & Sons, Ltd. [1910] 1 Ch 118
  • In re Leopold Cassella and Co. Gesellschaft M.B.H. [1910] 2 Ch 240

Full judgment

↓ Download PDF

The original judgment as reported. Read the original PDF before relying on any passage.

In Re - of an Appliaction for Registration of a Trade Mark, No 24 of 1929 by the Firestone Tire and Rubber Co. of Ohio, U.S.A.; In Re - of the Registration of Trade Marks Ordinance Chapter 89 Revised Edition of he Laws of Kenya, Section 7,
Source: this page presents Wakilii’s issue analysis and metadata for a publicly reported Ugandan judgment. Any AI-generated summary is marked as such. Judgment text is sourced from the Uganda Legal Information Institute (ulii.org). Wakilii is not affiliated with ULII.