The fight for ownership of trademarks is back in the courts, this time pitting an international company against two local firms.
South African-registered Innscor International Ltd has taken Rwandan fast food companies Pizza Inn Ltd and Chicken Inn Ltd to court for what it says is unauthorised use of its trademarks.
“We filed a court case after an attempt to reach an out-of-court settlement through Rwanda Development Board failed,” said Kizito Safari of Bona Fide law chambers, who represents Innscor.
Innscor International Ltd wants the two Rwandan companies to stop operating under the said names, arguing that apart from financially gaining out of allegedly “infringed trademarks,” Pizza Inn Ltd and Chicken Inn mislead customers, who expect the service to be from Innscor’s genuine brands.
Analysts say dropping the names would amount to loss of millions spent in advertising and marketing as well as loss of customers for these companies that have been growing and opening new branches around Kigali.
Information from Open Corporates, an online database which gathers information on companies, shows that Chicken Inn Ltd and Pizza Inn Ltd were incorporated in Rwanda as limited companies in October 2013.
Innscor International Ltd that claims to operate Pizza Inn and Chicken Inn brands in nine African countries, including Kenya and Uganda, argues that that operations of the two Rwandan companies have halted its investment plans.
“Our client had ambitions to invest in the fast food market in Rwanda and unfortunately cannot proceed because the initial plan was to operate using the two brands,” Mr Kizito said.
Though Stephen Zawadi, who represents Pizza Inn Ltd and Chicken Inn Ltd, acknowledged the existence of the case, he declined to comment on it, citing agreements with his clients that they will only comment on the case after appearing in court.
The advocate says his client has registered the trademark with RDB and emphasises that they are also registered internationally, based on international legal instruments that Rwanda is party to.
The World Intellectual Property Organisation (WIPO) Global Brand Database shows that Innscor International Ltd registered Chicken Inn and Pizza Inn as trademarks in Morocco in November 1999 and both marks classified as active are expected to expire in November 2019, per the recognised trademark protection duration.
The same company also registered Chicken Inn in Algeria in 2016. However, the two brands are not recognised as international trademarks by WIPO.
A preliminary hearing of this case is scheduled for October 10, when dates of the trial will be negotiated and set.
During this hearing, Chicken Inn Ltd and Pizza Inn Ltd will ask that Innscor pays a judicatum solvi, a financial guarantee that a foreigner is required to provide when bringing an action before the courts.
This security for costs is required to ensure the payment of costs and damages to which the trial could cause.
Legal battles about trademarks are not unfamiliar in Rwandan commercial court.
For the past two years, two rival flour manufacturing firms Bakhresa Grain Milling (Rwanda) Ltd and Mikoani Traders Ltd, both originating from Tanzania, have been in court over the trademark “Azania,” that both lay claim to.
Back in Tanzania Mikoani Traders Ltd owns Azania brand while Bakhresa Grain Milling Ltd owns Azam but when Bakhresa expanded its operation in Rwanda it also registered Azania as its trademark with RDB.
Mikoani, which was also eyeing the Rwanda market, went to court, claiming that its competitor maliciously registered this mark to prevent it from entering the Rwandan market. However, it did not succeed.
It later successfully petitioned RDB to remove Azania from the register, arguing that the mark has not been used by Bakhresa for a maximum period provided by the Rwandan intellectual property law.
Mikoani subsequently registered the mark, shifting the burden of suing to Bakhresa, which seeks to reclaim the trademark in a case currently pending in the commercial court.
The law passed in 2009 offers protection to registered trademark for a renewable 10 years’ term but reserves power to third parties to seek deregistration if a registered mark has not been used for an uninterrupted period of three years.