Understanding the Safaricom Vs. Color Planet Suit over Okoa Stima


In July 2015, a firm sued Safaricom alleging that the Telco was infringing on its Okoa Stima trademark. Safaricom launched a credit facility product in collaboration with Kenya Power that allows customers to borrow any amount based on a pre-determined  credit limit based on the customer’s relationship with Kenya Power. The loan is charged a facilitation fee of 10% and is payable in 7 days. The IT firm, Color Planet, said the name Okoa Stima is one of an electricity purchase software it developed and even introduced to Kenya Power seeking to partner in November 2013.

Local Blog IP Kenya has broken down the root of the tussle now before a court and we shall use excepts from their article to break the case down further.

Contentious Issue

The matter is the use of the Okoa Stima trademark. According to the post, Color Planet filed an application for the trademark on March 25th  2015 and two days later, received a  an approval letter from the Registrar of Trade Marks allowing it to register its mark. Safaricom on the other hand filed its application on April 10th 2015, seeking the Okoa Stima trademark.

Color Planet receives approval  

On  May 31st 2015, Colour Planet’s mark was advertised under the Industrial Property Journal. The advert states that registration of the trademark shall give no exclusive right over the use of the words Okoa and Stima and defined Okoa Stima as emergency electricity power on credit.

Safaricom counters Application

Safaricom received a refusal letter from the Trade Mark Registry of Kenya Industrial Property Institute (KIPI) owing to Color Paint’s first application which was undergoing registration. Safaricom then filed a notice of opposition on 27th July 2015 against the registration of Colour Planet’s trademark. The notice was forwarded to Color Planet who were then asked to file a Counter statement, which they filed on September 18th 2015.  The counters were then forwarded to Safaricom who were then required to file a statutory declaration.

Color Planet receives Trademark Certificate

Color Planet wrote to the KIPI asking for the notice of opposition to be deemed abandoned as Safaricom had neither filed their statutory declaration within the prescribed period nor had they filed for extension of time as provided for under the trade marks rules. The registrar wrote to Safaricom telling them, the opposition was deemed withdrawn and Color Planet had been issued with the certificate.

The Typo

It later emerged that Safaricom had on September 30th 2015 and 3rd November 2015 been issued with a 90 day extension to file the statutory declaration but these were filed as a second application instead of notice of opposition. Safaricom said they made a typo in the application for time extension while color planet sought for dismissal of the opposition and issuance of the certificate.  The registrar then dismissed the notice of opposition and issued Color Planet with the certificate earlier this year, to which the Safaricom filed a civil suit against the issuance of the certificate.

Source: IP Kenya