Buspass Ordered to Change Name and Surrender Profits

The Kenyan High Court has ruled in favor of Buupass Kenya Limited in a trademark infringement case against Buspass Kenya Limited. The ruling, delivered by Justice Njoki Mwangi, ordered Buspass to change its name and surrender any profits made under the contested name. This case underscores the importance of protecting intellectual property rights and highlights the legal complexities surrounding trademark disputes.

The Case Overview

Buupass Kenya Limited, registered on June 29, 2017, provides a comprehensive range of services including software, electronic and magnetic card tickets, and an SMS-based ticketing platform for pre-booking buses and making payments via mobile money and computer booking services. Buupass argued that their trademark had not faced any challenges and thus should enjoy exclusive rights in providing online ticketing services. The company claimed that Buspass, which was registered on November 27, 2020, deliberately chose a similar name to create confusion among customers and unfairly leverage Buupass’s established reputation and goodwill.

Buupass filed a complaint with the Registrar of Companies on February 25, 2022, asserting that they had not licensed anyone to utilize, copy, or modify their registered and protected trademark. Despite being ordered to change its name within 30 days, Buspass did not comply with the directive, leading to the legal battle that culminated in Justice Mwangi’s ruling.

Court’s Findings and Ruling

Justice Mwangi found that the names “Buupass” and “Buspass” were not only visually similar but also phonetically alike, which could easily lead to confusion among consumers. The court concluded that Buspass had indeed infringed on Buupass’s trademark, and this infringement had caused tangible harm to Buupass’s business, as evidenced by a decline in app downloads and online bookings.

The court ordered Buspass to change its name within 30 days and to surrender any profits made under the Buspass name. Additionally, Justice Mwangi barred the directors and employees of Buspass from infringing on or passing off Buupass’s intellectual property. This included prohibiting the use of any attributes or designs of trade that were identical or strikingly similar to those of Buupass.

Arguments from Both Parties

Buupass, represented by Wycliffe Omondi, argued that the move to register Buspass was a deliberate attempt to create confusion among customers. Omondi cited instances where Buspass and Buupass were used interchangeably in advertisements, notably on Facebook, which misled the public into believing that the two companies were related. Omondi asserted that such actions were not only deceptive but also detrimental to Buupass’s business, resulting in a noticeable decrease in customer engagement and bookings.

In their defense, Buspass argued that an official search had confirmed the availability of the name “Buspass” for registration. They contended that their operations were distinct and that the two names were easily differentiable. Buspass’s lawyers maintained that their company had not gained any unfair advantage by associating itself with Buupass and had not used Buupass’s name or trademark in any way.

Implications for the Future

The ruling has significant implications for the business community, particularly for companies operating in the same industry. It reinforces the necessity for businesses to conduct thorough due diligence before selecting a name and emphasizes the importance of adhering to trademark laws. The decision also highlights the role of the Registrar of Companies in ensuring that new registrations do not conflict with existing trademarks.

For Buupass, the ruling is a vindication of their efforts to protect their brand and intellectual property. It sets a precedent for other companies facing similar challenges, encouraging them to pursue legal recourse to defend their trademarks. The appointment of an accountant by the Institute of Certified Public Accountants of Kenya to establish the profits made by Buspass using Buupass’s trademark further underscores the court’s commitment to ensuring fair restitution.

The case of Buupass versus Buspass is a clear example of the complexities involved in trademark disputes and the importance of protecting intellectual property. Justice Njoki Mwangi’s ruling not only provides a resolution to the conflict between the two companies but also serves as a crucial reminder for businesses to respect trademark rights. As the business landscape continues to evolve, such legal precedents will play a pivotal role in shaping the conduct of companies and safeguarding the interests of rightful trademark holders.