The Kenyan Premier League (KPL) prides itself as one of the best run and stable football leagues in the East African region. Despite recent upheavals that were occasioned by the exit of some key sponsors, KPL matches went ahead uninterrupted despite muffled complaints about lack of payments to clubs. As the KPL makes efforts to replace or renew sponsors, football fans always query why there is such apathy by local companies to be involved in local football. If football is the most popular sport in the country (beating even the more successful athletics and sevens rugby)surely a product such as KPL should be a hot commodity to corporates? Yet, in assessing the net worth of our league, one of the key parameters has to be its branding abilities and tied to that the Intellectual Property involved. Unfortunately, most of the teams that play in the Kenyan Premier League have not bothered to curve out a brand that can be hailed as a product when the rights to the leagues matches are being negotiated. Only four out of the eighteen teams in the league have either registered trademarks of their crests or applied for the registration of the same. AFC Leopards, Gor Mahia and Nakumatt FC are the only teams with registered trademarks in the top tier football league in the country whilst Mathare United has applied for registration of its marks. Anciean Limited has also filed applications for Wazito FC that are pending registration. Four other teams that are corporate related teams such asTusker FC, Chemelil Sugar, Nzoia Sugar and Posta Rangers make do with an imitation of their parent companies’ trademarks that are not the same as their official club crests. Curiously, East African Breweries have registered Tusker Sports as a trade mark and left out Tusker FC. Whilst AFC Leopards have one validly subsisting trade mark (in two classes) registered in the year 2008, their previous three trademarks 32489-91 registered in 1984 were all allowed to lapse for non-payment of renewal fees. Incidentally, the Club has not protected its nickname ‘Ingwe’ as a trademark owing to a conflict cited by the Registrar in respect of previous trademarks registered by the club’s supporter’s trust. This points to the need for clubs to always work closely with affiliated groups to ensure there is no danger to its primary marks. Gor Mahia have two validly subsisting trade marks (one in each class) registered in the year2012 though the club has also not protected its nickname ‘Kogalo’ as a trademark. Related groups have however registered trademarks such as Gor Mahia Sacco and Goma Lotto though efforts by one company to register ‘Kogalo Night’ was refused by the Registrar inexplicably citing the ‘Kogelo Marathon Run for Charity’ trademark as being the closely resembling mark. Mathare United’s three trademark applications though made in the year 2011 are still not protected as the club has failed to comply with registration requirements that include paying advertisement fees for the marks to be notified to the general public in the Industrial Property Journal. Nakumatt FC has registered its two trademarks (one word, one word and device) though the same appear in the name of Nakumatt Holdings. The recent announcement that the Club is up for sale may mean that the purchaser acquired the trademarks for the registered proprietor though a new proprietor on weighing the goodwill in the trade mark can choose to change the same to align it to any new name of the club.
Trade Marks are part of the assets of the clubs and the fact that so many clubs in the league have not even bothered to have their trademarks protected points to very shallow marketing ethos by the clubs and the Kenyan Premier League as a whole. The clubs’ crests together with sponsor logos are used on advertising banners thus where the clubs have not registered their trademarks, they run the risk of other persons imitating their crests. Clubs will also have legal problems taking action against persons who sell merchandise under their crests as trademark infringement is only operational and can only stand where the trademark is registered. The clubs may nonetheless pursue passing off even with unregistered trademarks. For those using their affiliated company logos without any formal application made to the Registrar of Trade Marks for license (or registered user) usage, they run the risk of opening up their mother company trademarks to abuse by others who may then cite acquiescence as the reason for their misuse. Most sponsors require the sporting entity to list its Intellectual property (usually the trademarks) and to warrant that the same shall be kept subsisting during the term of the sponsorship. KPL clubs will therefore have problems meeting this condition unless they register their trademarks. For instance if AFC Leopards cannot guarantee their Ingwe TV show as a trademark it heightens infringement issues. Unlike other leagues such as the National Basketball Association which holds the trademarks on behalf of the clubs and renews the same when due, KPL clubs have no such arrangement. This may be due to the fact that American sports do not have relegation whereas the Kenyan Premier League have comings and goings to the league. KPL as the body mandated to run the league ought to have educated the clubs on the importance of the Intellectual Property protection or if they have done so, they should ensure some form of enforcement of the same to increase commercial credibility of the league.
It is noteworthy that the Kenyan Premier League itself as a body does not have a registered trademark. Indeed, the logo that the league uses bears such a close resemblance to the Lion Air logo that one may conclude that creativity and intellectual property is not a forte of the league. The same could be an easy target for infringers who may cite the potential passing off of the logo if accused by the league. Curiously, the body that KPL is affiliated to being the Football Kenya Federation has also not registered its trademarks in the country. Even worse, nicknames such as Harambee Stars are also not protected under trademark law despite the lesson that many African nations learnt during the dispute by their fellow federation South African Football Association and Stanton Woodrush over the nickname Bafana Bafana. SAFA ended up paying huge sums reputed to be in the region of Kshs. 40 million to be the proprietor of the trade mark Bafana Bafana. Other sports federations should nonetheless also take cue. Whilst the Kenya Rugby Football Union registered its trademark 55732 in 2004 which was due for renewal in 2014, Shujaa, the much celebrated Rugby Sevens team is not registered as a trademark by the same Rugby Union. There are already several companies that own the Shujaa Trade Mark including Foot plus Limited and Shujaa Clothing Company Limited in classes such as clothing which may be of interest to the Rugby Union. With the dearth of trademark protection, is it therefore any wonder that the Kenyan Premier League clubs are largely unrecognizable? How would such clubs attract following within the country and outside Kenyan borders with little branding? How do such clubs protect their merchandising if they cannot even file a simple application to protect their trademark and protect their brands? Other clubs worldwide have recognized merchandising as a revenue stream and protected their brands in a major way. Barcelona FC have 300 filed or registered trademarks whist Manchester United have a count of 271. Even players have also protected their trademarks with Neymar having 47 trademarks to his name (including his logo NJR). Lionel Messi has 33trademarks. In Kenya, Manchester United has equally protected its trademark 63155.Kenyan Premier League clubs should up their game and ensure they have adequate intellectual property protection on this important aspect of their business. Otherwise, the tag of being an organized league will be a hollow one and probably untrue.
The writer is an Intellectual Property
and Sports Law lawyer and former
Deputy Secretary General of AFC Leopards.