Firms fight for brand name in fireworks market control race

The two also accuse each other of using dirty marketing tricks to dilute the rival’s brand.

The High Court has now set the hearing of the dispute for September 2025.

Nairobi Pyrotechnics incorporated in August 2018, instituted the suit on December 9, 2022, seeking a temporary injunction restraining Nairobi Sports House by itself or its employees from using the trade name ‘Nairobi Pyrotechnics’, pending hearing and determination of the suit.

Nairobi Pyrotechnics told the court since its incorporation, it had engaged in extensive advertisement, and media branding which had turned it into a renowned agency in the business provision of fireworks, confetti, and pyrotechnics in East and Central Africa.

“However, the defendant (Nairobi Sports House Ltd), has without any colour of right, illegally, in utter disregard to business etiquette and trade practice and to the detriment of the plaintiff began trading as ‘Nairobi Pyrotechnics’ both on its physical stores and digital platforms. A name that is wholly and squarely associated with the plaintiff and providing goods and services similar to those provided by the plaintiff.”

As a result, Nairobi Pyrotechnics claimed that Nairobi Sports House had gained business, mileage, clientele, and trade unfairly, causing confusion and deception among its clients and the public.

“The cumulative effect of these actions is diluting the distinctiveness of the plaintiff’s brand name, a tangible loss of goodwill and competitive advantage which the plaintiff has painstakingly built over the years. The defendant has engaged in passing off by unlawfully misappropriating the plaintiff’s name as it is not legally incorporated and or registered to trade as such.”

‘Bad faith’

In its defence statement, Nairobi Sports House, which also deals in sports gear, argued that it had been using ‘Nairobi Pyrotechnics’ since 2010 and that Nairobi Pyrotechnics Ltd picked the brand name from the market and registered as a company.

Nairobi Sports House also argued that Nairobi Pyrotechnics had admitted in its witness statement that it was aware of the brand name’s presence in the market as of 2016, two years before its incorporation as a company.

Having been trading in fireworks and indoor pyrotechnics business since 1996, Nairobi Sports House claimed the incorporation of Nairobi Pyrotechnics Ltd was in bad faith and the right thing to do was for the Registrar of Companies to order a change in the name or expunge it from the companies’ registrar.

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Nairobi Sports House maintained that having been in the fireworks business for over 28 years, it had built all the goodwill associated with the name ‘Nairobi Pyrotechnics’ and that Nairobi Pyrotechnics Ltd could not claim the same.

“The plaintiff does not have any goodwill in the name ‘Nairobi Pyrotechnics’. The defendant welcomes healthy competition but abhors the dirty marketing tricks by the plaintiff aimed at riding on the defendant’s goodwill.”

Trademark ownership

In her December 8, 2023, ruling on the temporary injunction sought by Nairobi Pyrotechnics Ltd, Justice Christine Wanjiku Meoli found that neither of the two firms legally owned the brand name in question as a trademark.

“None of the parties has evinced proof of registration of the trademark ‘Nairobi Pyrotechnics’ and or ‘Nairobi Pyrotechnics Limited’. In the absence of proof by the applicant that it has registered the name ‘Nairobi Pyrotechnics Limited’ as a trademark, the onus fell upon the applicant to demonstrate the alleged act of passing off by the respondent. The court is not persuaded that the onus has been discharged. Assertions of the use by the respondent of a near-similar name, without more is not enough. There is therefore no demonstration of the alleged passing off.”

“The issues arising herein require an in-depth inquiry into first rights, purpose, and effect with respect to the imputed name. It would be perilous for this court to attempt such an examination at this stage, more so in the circumstances of this case. This exercise must await the trial,” she ruled.

Following the ruling, Nairobi Sports House Ltd initiated the process to trademark the name ‘Nairobi Pyrotechnics’ and obtained the trademark certificate in January 2024.

It then filed a counterclaim against Nairobi Pyrotechnics Ltd before Justice Meoli, alleging trademark infringement and seeking to expunge the company’s name and compensation for erosion of its brand goodwill.

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