Recent Anti-counterfeit transactions

• Skechers USA Inc. II through Adams & Adams in relation to the sale and advertising of counterfeit goods bearing SKECHERS trademarks.
• Canon Kabushiki Kaisha on online enforcement and related anti-counterfeiting enforcement actions in relation to the CANON trademark.
• Chanel Limited through Adams & Adams on anti-counterfeiting enforcement actions in relation to the CHANEL trademarks.
• Advised ADIDAS GmbH in relation to filing a counterfeit action before the Kenyan Anti-Counterfeit Agency resulting in the successful raid, seizure and destruction of a consignment of counterfeit products at the Port of Mombasa that were infringing on the protected trademark rights of ADIDAS.
• Advised Glaxo SmithKline in relation to filing a counterfeit action before the Kenyan Anti-Counterfeit Agency and the Commissioner for Customs resulting in the successful raid, seizure and destruction of a consignment of counterfeit products infringing on the protected trademark rights of GSK.
• Advising Microsoft Corporation on legal compliance issues in software counterfeits.
• Advising Oracle Corporation on legal compliance issues in software counterfeits.
• Advised Reed Elsevier (UK) Limited, trading as Lexis Nexis, on filing a counterfeit action before the Kenya Anti- Counterfeit Agency which resulted in a successful raid and seizure of counterfeit book sets infringing on the Lexis Nexis copyright.
• Advising Syngenta on anti-counterfeit issues in Kenya
• Advising BASF Chemicals on anti-counterfeit issues in Kenya
• Advising 3M Corporation on anti-counterfeit issues in Kenya
• Advising Blount Inc, an Oregon based global agro- tools manufacturer, in several anti-counterfeit mandates over the past 3 years across the country.
• Advising Diageo on an anti-counterfeit matter in Rwanda in relation to its JOHNNY WALKER whisky brand that originated in Dubai.

Trademark Registration

• Alliance for a Green Revolution in Africa (AGRA) the trade mark registration strategy and assisted in trade mark registration in a number of countries in in Eastern, Southern, Western and Northern Africa.
• Acting for Mjengo limited, a leading Kenyan company in the FMCG sector in trade mark registration strategy and assisted in trade mark registration in different countries in Eastern, Southern, Western and Northern Africa, the United Kingdom, Saudi Arabia, Yemen, the UAE, Singapore, Hong Kong and Vietnam, among other jurisdictions.
• Advising and acting for Four Seasons Hotels Limited through Fross Zelnick Lehrman & Zissu in the protection of trade marks in Kenya, Tanzania and Zanzibar.
• Equity Group Holdings Plc in trade mark registration strategy and assisting in trade mark registration in a number of countries and territories including Kenya, Uganda, Tanzania, Zanzibar, Rwanda, Ethiopia and the Democratic Republic of Congo, among others.
• Diageo Group of Companies in trade mark clearance searches and registration in Kenya, Tanzania and Zanzibar and in managing client’s portfolio of trade marks in those jurisdictions.
• Advising and acting for Standard Chartered Plc through Adams & Adams in a trade mark search and registration in Kenya.
• ABSA in trade mark searches and registration in Kenya.
• Advising and acting for Kenya Airways in trade mark protection in Kenya.

Trademark Litigation

• Advised and acted for Shell Brands International AG through Adams & Adams in connection with the Infringement of various Kenya trade mark registrations in the name of Shell brands International AG and passing-off by Malindi Service Station.
• Advising and acting for Diageo in this ongoing matter pending before the High Court of Kenya. The disputes relates to the infringement of the CAPTAIN MORGAN trade marks. There is a pending opposition before the Registrar of Trade Marks related to the dispute before the High Court of Kenya.
• Advising Cipla Limited in relation to a dispute with Cipla’s former distributor, Lords Healthcare Ltd, who is claiming ownership of Cipla’s global trade marks, including its corporate name Cipla. The distributor is also claiming ownership of certain drug registrations, as a result of having applied for registration of those drugs.
• Capwell Industries Limited in a suit filed by Unga Limited (the “Plaintiff”) in the High Court, Commercial and Tax Division. The Plaintiff filed the suit alleging that it is the owner of Copyright and trade mark rights in the slogan DO AMAIZEING WITH HOSTESS. It claims that Capwell’s use of the brand AMAIZE in the sale and advertising of its maize meal product is liable for copyright infringement, trade mark infringement and passing off of its DO AMAIZEING WITH HOSTESS brand. The Plaintiff has filed an application seeking an interlocutory injunction restraining Capwell from selling it’s AMAIZE branded maize meal pending hearing of the suit.
• Bata Brands SA and Bata Shoe Company (Kenya) Limited in relation to appealing a High Court decision concerning enforcement of an (unregistered) industrial design.
• Successfully acted for Nairobi Java House Limited in a High Court Civil Appeal in Kampala, Uganda in an appeal against the decision of the Registrar following trademark opposition proceedings.
• Acted Eaton Towers in appeal in the High Court Civil Appeal Court in Kenya against ruling of the Assistant Registrar of Trademarks allowing opposition against registration of the “EATON TOWERS” mark.
• Acting for Diageo Brands B.V in opposition of the registration of the BLUE LABEL.
• Acted Google Inc in opposition proceedings relating to its “BEBAPAY” trade mark.
• We acted for Sony Corporation in appealing in the High Court Civil Appeal against a ruling of the Assistant Registrar that allowed the Applicant’s mark to proceed for registration.
• We acted for Diageo Brands B.V in a suit in the High Court of Kenya against Platinum Distillers.
• Instructed by Kenya Airways to instigate arbitration proceedings in order to obtain ownership of the domain name www.kq.com. The arbitration was conducted within the auspices of the WIPO domain name dispute resolution centre.
• Acting for Diageo Brands B.V and EABL International Limited, in close coordination with the Trust Law Chamber in Rwanda to assist the initiation of prosecution against suspects in counterfeit goods.
• Acted for Bharti Airtel Limited, Airtel Networks Kenya Limited in a domain name disputes
• Acted for Procter and Gamble in advertising and competition law litigation by defending a suit filed by Unilever relating to the OMO and Ariel brands.
• Acted for Bidco Oil Refineries Limited in a litigation matter with Mt. Meru Limited in Zambia.
• We advised Starbucks and defended it in respect of demands made by 3 individuals depicted in a mural in various Starbucks stores.

Technology, Media and Telecommunications

• John has led a team of lawyers in Bowmans across all our offices and a network of Firms in Africa that have a privacy, technology and telecoms  focus  in advising Google  on 86 projects in  32 countries in Africa  since 2018 under the Google Hub covering:  fintech, privacy, technology, telecoms infrastructure, e-commerce , regulatory and compliance projects.
• Jack Ma Foundation on the roll out of its African Netpreneur Prize Initiative throughout the continent.
• A refugee protection organisation in connection with the proposed roll out of a mental health app designed to support young refugee mothers in Kenya.
• Advised Microsoft EA Limited on the setting up of an ‘IP Hub’ which is a technology ‘space’ or forum to assist young software developers to understand intellectual property and be aware of the means available in law to protect the IP in their software so as to ultimately enable them to commercialise their IP from a point of knowledge in terms of value of their IP.
• Advised Kopo Kopo Inc, an American entity from the Bay Area of San Francisco (Silicon Valley) as a merchant aggregator for MPESA’s buy goods functionality on the regulatory landscape relating to mobile money, and negotiated contracts with Safaricom in relation to its MPESA platform and the establishment of a mobile phone point of sale.
• Advised on the drafting and negotiating of a co-operation agreement between Safaricom Limited and Seven Seas Technologies Limited for collaboration in the research and development of innovative technology products, including the use of cloud computing.
• Advised Centum Investments and Etranzact, a Nigerian mobile solutions and e-commerce provider, in the establishment of a local entity under a joint venture seeking to develop electronic payment solutions for East Africa.

Data Protection

• Facebook on their data privacy matters in Kenya
• Google on data privacy in Kenya and 30 other countries in Africa
• Microsoft on their data privacy matters in Kenya
• IBM on their data privacy matters in Kenya
• UAP Old Mutual on data privacy matters
• Proctor & Gamble on data privacy matters
• BASF on data privacy matters
• Advised several clients of White & Case on data privacy matters
• Advised several clients of Baker & McKenzie on data privacy matters
• KPMG, working with Freshfields on certain aspects of privacy in relation to a Kenyan project
• Advised several global clients on data privacy matters in Kenya working with international law firms in London, Washington DC, New York and Los Angeles

Others

• Advising and acting for Blue Host Inc through Cowan, Liebowitz & Latman, P.C in BLUEHOST.CO.KE domain name proceedings. The matter proceeded to arbitration and was concluded successfully in favour of Blue Host Inc.