Exclusive Use of a Trademark by a Former Partner After Separation: What Does Kenyan Law Say?

When business partners fall out, intellectual property, especially trademarks and brand names, often becomes the battlefield. Can one former partner register a trademark that was previously used jointly? Does such registration amount to bad faith? What happens if the other partner continues using the brand?

The case of High Flyer Series, used by two business partners in a publishing enterprise, is a classic example of such a dispute.

The Kenyan courts have now addressed this squarely in the “High Flyer Series” litigation, and the final position is that a former partner who validly registers a distinctive composite trademark acquires exclusive statutory rights to that mark, but cannot monopolize a shared word or brand name in the abstract; conversely, an ex‑partner who later adopts a confusingly similar device will be liable for infringement.

What was the background to the “High Flyer Series” dispute?

Two individuals, Antony Kiai & Peter Gichuki, who were initially business partners, ran a publishing business (High Flyer Services/High Flyer Services Ltd) that produced revision books for Kenyan schools. During their partnership, they used certain brands and get-ups on their books, including the phrase “High Flyer Series,” but did not register any trademark at that time. Around 2006, the relationship broke down; the partners separated and each continued in publishing, still trading using the High Flyer business name and using related branding on their books.

In November 2006, Antony Kiai (the 1^st appellant in the Court of Appeal proceedings) successfully registered a trademark in Class 16, comprising a brown flying eagle holding three books with its talons, together with the phrase “High Flyer Series” (Trademark No. 60247) while knowingly allowing his former partner and competitor to continue using the same or similar branding, and only later published a notice in the newspaper asserting his rights. Five (5) years later, the other Peter Gichuki (the 1^st respondent) also published books featuring the phrase “High Flyer Series” and an eagle device, prompting a suit for trademark infringement and passing off, and a counterclaim for loss of business and defamation.

What did the High Court (Chemitei, J.) decide in HCCC No. 45 of 2011?

The High Court accepted that both parties had, during their joint business, used “High Flyer Series” as a brand or business identifier on their publishing products. It also found that the Plaintiff registered Trademark No. 60247 in 2006, kept quiet about the registration for several years, and only later published a newspaper notice warning the public against using the mark.

On that basis, the High Court concluded that:

• The Plaintiff, Antony Kiai, who petitioned the court for infringement of his trademark, “did not have good intentions” in registering the trademark; his conduct amounted to “stealing a march” on his former partner, because they had both used “High Flyer Series” as a business brand in their company and continued to do so after separation.
• By allowing the Respondent, a former co-director and competitor, to continue using the mark for about five years with full knowledge of the registration and inhibition process, the plaintiff had acquiesced and could not later “cry foul.”

The court therefore:

• Dismissed the plaint: it declined to uphold the claim of trademark infringement and passing off, effectively denying the registrant the exclusive use he claimed.
• Allowed the counterclaim in part, awarding Kshs. 20 million as “general damages” for loss of business and other incidental losses, even though the loss of business was not pleaded with particularity as special damages.
• Rejected the defamation claim in the counterclaim, noting that no evidence had been led to prove that the newspaper notice defamed the respondents.

The High Court thus resolved the dispute essentially on equitable grounds—bad faith, concealment, and acquiescence—rather than on a strict application of the Trade Marks Act to the registered device.

What was the Court of Appeal’s analysis in Civil Appeal E003 of 2021 KECA 842?

The Court of Appeal, following an appeal by the dissatisfied party, Antony Kiai, the Plaintiff in the High Court matter, fundamentally reframed the dispute and reversed the High Court, grounding its reasoning in the statutory regime governing trademarks. Its core findings were:

1. What exactly was registered?

   • The registered mark was not the words “High Flyer Series” alone; it was a composite device: a brown flying eagle holding three books with its talons, together with the phrase “High Flyer Series.”
   • The High Court erred by treating “High Flyer Series” as the trademark and relegating the eagle‑and‑books device to a mere logo. Legally, the device and words together constituted the registered trademark and had to be assessed as a whole.

2. Effect of prior joint use and “brand” language

   • While the parties had used “High Flyer Series” as a brand in their earlier joint business, they had not registered any trademark at that stage.
   • The Court held that the 1^st appellant’s later registered trademark did not infringe or usurp any pre-existing proprietary right of the 1^st respondent, because the prior joint use was of an unregistered brand, not of the registered composite mark.
   • The Court expressly stated that there is a “big difference between the trademark and the brand ‘High Flyer Series’,” and that the trial court failed to appreciate this distinction, leading it to an erroneous finding of bad faith and “stealing a march.”

3. Validity of registration and notice

   • The 1^st appellant followed the trademark procedure under the Trade Marks Act: the application was accepted, advertised in the KIPI Journal for the statutory period, and no opposition was filed.
   • The Court rejected the notion that the registrant was under an extra-statutory obligation to personally notify his former partner; advertisement in the official journal satisfied notice requirements.
   • Therefore, the registration stood as valid and conferred exclusive rights under section 7 of the Trade Marks Act.

4. Infringement by the former partner’s later mark

   • The Court compared the appellants’ encyclopedia (with the registered eagle‑and‑books device and “High Flyer Series” wording) to the respondents’ later encyclopedia, which also featured a brown eagle (this time holding a manuscript), in similar colours, alongside the phrase “High Flyer Series.”
   • Applying the confusion test, including the reasoning in EA Industries Ltd v Trufoods Ltd EA 420, the Court concluded that the respondents’ mark was “so similar” to the appellants’ trademark as to be likely to confuse or deceive the public.
   • It held that the respondents had infringed Trademark No. 60247 and that their continued use of such a similar mark could not be justified by their prior involvement in the joint business.

5. Acquiescence and bad faith revisited

   • The Court of Appeal disagreed with the High Court’s view that silence or lack of personal notice for several years amounted to acquiescence or bad faith sufficient to defeat a valid registration.
   • Once the registration process had been completed in accordance with statute, the registrant was entitled to rely on it, and the remedy for any aggrieved person lay in opposition, expungement or other statutory avenues, not in ex post equitable attacks based on the parties’ former relationship.

6. Damages and proof of loss

   • The Court held that “loss of business” is a special damage that must be specifically pleaded and strictly proved; citing this standard, it found that the counterclaim did not plead or quantify loss of business and no evidence meeting that threshold was produced.
   • The Kshs. 20 million awarded by the High Court was therefore without legal basis and was set aside in its entirety.
   • The appellants, despite succeeding on infringement, also did not obtain damages because they had not proved actual loss to the required standard, but they obtained declaratory and injunctive relief plus costs.

In the result, the Court of Appeal:

1. Allowed the appeal, set aside the High Court judgment in full.
2. Dismissed the respondents’ defence and counterclaim.
3. Declared that the respondents had infringed Trademark No. 60247.
4. Issued a permanent injunction restraining them from using the trademark or any confusingly similar device.
5. Declined to award damages to the appellants for lack of proof, but granted them costs in both courts.

The Court thus confirmed that a former partner who validly registers a distinctive composite mark enjoys exclusive statutory rights to that mark, regardless of previous joint use of related branding.

Did the courts treat this as a matter of general public importance under the Constitution?

After losing in the Court of Appeal, the respondents (who had been found to infringe the trademark) sought to escalate the matter to the Supreme Court as one of “general public importance” under Article 163(4)(b) of the Constitution.

Certification application at the Court of Appeal (Civil Appeal (Application) E003 of 2021) [2025] KECA 1385 (KLR)

• The respondents applied for a stay of execution of the 2024 judgment and for certification that the intended appeal raised matters of general public importance.
• The Court of Appeal held that, following delivery of its final judgment, it was functus officio and could not grant a stay under the usual interim jurisdiction.
• On certification, applying the Hermanus Phillipus Steyn and Standard Chartered tests, the Court found that the dispute was essentially a private commercial contest between two traders over exclusive use of a specific registered trademark and did not raise legal questions transcending the parties’ interests.
• It noted that the applicants’ grievances were largely about alleged errors in factual evaluation and claims of injustice, not about any unsettled or conflicting legal principles on trademark registration or former partners’ rights.
• The application was dismissed with costs.

Review application at the Supreme Court (KESC 23)

The respondents, dissatisfied, then moved the Supreme Court seeking review of the Court of Appeal’s refusal to certify.

The Supreme Court reiterated that for a case to qualify as raising a matter of general public importance, it must go beyond the narrow interests of the parties and elevate a point of law of broad significance or uncertainty.

It held that the High Flyer dispute did not meet this threshold: it revolved around the application of well‑settled trademark principles to a particular set of facts and did not present systemic or jurisprudential issues demanding Supreme Court intervention.

The application for review was therefore dismissed, leaving the Court of Appeal judgment as the final resolution of the dispute.

What principles now govern exclusive use of trademarks by former partners?

The combined effect of the High Court, Court of Appeal, and Supreme Court episodes yields several clear doctrinal points for Kenyan practice:

1. Registration versus brand use
   • Using a word or phrase as a brand or trading name in a joint business does not, by itself, create registered trademark rights; registration under the Trade Marks Act is required for statutory exclusivity.
   • A later registered composite mark (e.g., a distinctive device plus a phrase) can confer exclusive rights even if the phrase itself was previously used by both partners in an unregistered form.
2. The mark is assessed as a whole
   • Courts will look at the registered mark in its entirety (device + words + overall get‑up), not isolate a single element such as a word.
   • Exclusive rights attach to the overall combination; the proprietor may not necessarily control all use of a common phrase but can restrain adoption of a confusingly similar composite device.
3. Prior partnership does not veto later registration
   • A former partner is not automatically barred from registering a trademark associated with a previously co-owned business, provided the registration is lawful and follows the statutory process (application, examination, advertisement, opportunity for opposition).
   • The other partner’s remedy, if aggrieved, is to oppose registration, seek expungement, or assert common‑law passing‑off rights, not to rely on general notions of betrayal or “stealing a march” alone.
4. Acquiescence and bad faith are narrowly applied
   • Silence after valid registration and reliance on official advertisement in the KIPI Journal do not amount, without more, to bad faith or acquiescence sufficient to defeat statutory rights.
   • Courts will be slow to use equitable labels (like “stealing a march”) to undermine a registration that complied with the Act, particularly where the non-registrant failed to utilize statutory remedies in time.
5. Former partners may continue non-infringing use
   • The High Flyer judgment indicates that the registrant had “no problem” with the ex-partner using the phrase “High Flyer Series” per se, so long as the ex-partner did not copy the registered eagle‑and‑books device and overall confusing get-up.
   • Thus, former partners may still use shared words or elements, provided they design and present their marks in a way that is sufficiently distinct and not likely to cause confusion.
6. Proof and pleading of loss are crucial
   • Claims for loss of business or similar economic harm are treated as special damages and must be specifically pleaded and strictly proved; courts will not uphold large global awards unsupported by detailed pleading and evidence.
   • Even a successful registrant may walk away with injunctive relief but no damages if they do not prove actual loss; conversely, a former partner cannot recover alleged loss of business merely by complaining about a rival’s registration.
7. No elevation to constitutional “public importance.”
   Attempts to portray the issue as a matter of public importance were rejected; the courts see disputes over exclusive use of a mark between former partners as part of ordinary IP and commercial litigation, not as constitutional test cases.

Practical guidance for partners and practitioners on handling trademarks in joint businesses?

1. Document ownership early: Partnership deeds, shareholder agreements, and joint‑venture contracts should specify who owns existing and future trademarks and how they will be registered, licensed, or assigned if the relationship ends.
2. Register promptly: If a brand is intended to be central to a business, the partners should register it early and decide whether it will be owned jointly or by an entity, rather than leaving it unregistered and vulnerable to unilateral registration later.
3. Monitor the IP journal: Former partners should actively monitor the KIPI Journal and oppose any applications they consider objectionable; failure to oppose weakens later equity‑based complaints.
4. Design for distinctiveness: Ex‑partners who continue in the same trade should deliberately design marks and get‑ups that are visually and conceptually distinct from any registered marks associated with the former joint business, especially where those marks are composite devices.
5. If you separate, negotiate an IP exit plan: Decide whether: One party will buy out the other’s IP interest; Both may use the brand in different get-ups; One party will rebrand entirely; There will be co-existence agreements defining permissible scope.
6. Plead and prove loss rigorously: When seeking damages, especially for loss of business, parties must provide detailed pleadings and cogent proof of actual loss; otherwise, they are likely to secure only declaratory and injunctive relief.

How Njaga & Co. Advocates LLP Can Support You in IP Protection and Enforcement

Safeguarding intellectual property is no longer optional; it is a strategic necessity. The dispute analyzed above demonstrates how quickly a shared brand can become a legal battleground when partners separate, and how costly the consequences can be when IP rights are not proactively secured.

At Njaga & Co. Advocates LLP, we are uniquely positioned to help individuals, companies, publishers, creatives, and innovators avoid such pitfalls and build defensible, enforceable IP portfolios. Our approach is grounded in strategic foresight, legal precision, and commercial practicality.

We are best in:

• Conducting trademark searches and registrations;
• Advising on intellectual property ownership in partnerships;
• Drafting IP clauses in shareholder and partnership agreements;
• Dispute resolution on trademark infringement and passing-off claims;
• Advising on goodwill valuation and damages.
• Brand Protection for Authors, Publishers & Digital Creators

Disclaimer: This article provides general information and does not substitute legal advice on specific circumstances of any individual or organization. While the information is accurate as of the date published, we cannot guarantee it remains accurate at the time you read it or that it will stay current. Before acting on any of this information, please seek professional legal advice tailored to your situation.