Court allows Mabati Rolling to destroy its rival's roofing sheets for trademark breach

Roofing sheet manufacturer Royal Mabati Factory has been ordered to pay its rival Mabati Rolling Mills Sh2 million for breaching the latter's trademark.

At the centre of the contest is Mabati Rolling Mills' brand name "Versatile". Justice Wilfrida Okwany of the High Court also ordered Royal Mabati to stop using the name, and to destroy within 14 days all its colour-coated roofing sheets and tiles, branded with the name.

Okwany found that coloured roofing sheets sold to consumers by the two firms are similar, hence, there was a likelihood of confusion when they use the same symbols, word, logo, slogan, and design which ought to distinguish them.

“Clearly, therefore, allowing the defendant (Royal Mabati) to continue using the same trademark as the plaintiff (Mabati Rolling) would negate the purpose of such registration. It is, therefore, my finding that the registrar ought to expunge the mark by the defendant,” ruled Okwany.

Justice Okwany also gave Royal Mabati 90 days to reveal how much profit it had made while using the Versatile brand name. 

In court documents, Mabati Rolling, which is associated with billionaire Manu Chandaria, said it had reserved the name Versatile for its exclusive use.

Mabati Rolling Mills said it registered the trademark on October 18 2004, and had spent more than half a billion shillings to market its roofing sheets using the popular name.

The firm explained that it registered the name Versatile as the brand name for its colour-coated roofing iron sheets and tiles twice - on March 9, 2005 and May 28, 2013. 

“Passing off the defendant’s "Bricktile" products as the plaintiff’s by use of the descriptive word "Versatile" has caused deception to the members of the public acquiring the iron sheets and tiles belonging to the defendant in the belief that they are acquiring iron sheets manufactured by the plaintiff and the plaintiff has suffered damage,” Mabati Rolling Mills argued.

At the same time, Mabati Rolling Mills told the court that although its rival had tried to bring out colour differences in their products as a distinction, it never denied using the trademark.

The firm claimed that Royal Mabati had illegally obtained trademark number 89075 "Royal Versatile".

The court heard that Royal Mabati was incorporated on March 30 2015, and its trademark was registered less than six months later.

“We are seeking a permanent injunction blocking the defendant, whether by its directors, officers, servants or agents, licensees, franchisees or any of them or otherwise from packaging, distributing, advertising, marketing or in any way availing to the public its products known as "Bricktile" by use of the descriptive word "Versatile"," Mabati Rolling Mills continued.

In its reply, Royal Mabati denied it had breached Mabati Rolling Mills' trademark. In its counterclaim before the court, it argued that Versatile was an ordinary verb and therefore cannot be protected for exclusive use.

Royal Mabati urged the court to dismiss the case saying that the word "Royal Versatile" had become a part of its name and if it was to be expunged, it would give Mabati Rolling an unfair advantage in the market.

It accused Mabati Rolling Mills of feeling uncomfortable with new market players who are producing quality roofing products at competitive prices.

The judge heard that Mabati Rolling Mills had not produced evidence to prove confusion in the market.

“The word Versatile is a laudatory term which has its foundation in the English language and so it cannot be protected as a trademark,” Royal Mabati argued, adding that the word was used across the roofing industry to ascertain the quality, strength, and reliability of the roofing materials.

“The plaintiff did not tender any evidence to show there is confusion in the market arising from the defendant’s use of the trademark "Royal Versatile".

It urged the court to declare that it had a right to sell its colour-coated roofing sheets and tiles in Kenya and beyond and describe them using the word "Versatile".

Royal Mabati also pleaded that the court should bar Mabati Rolling Mills from using the name "Royal Versatile" on its products.