Iron sheet firms fight over ‘Versatile’ name

Workers at the Mabati Rolling Mills one stop centre. file photo | nmg 

By GALGALLO FAYO

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Summary

• Mabati Rolling Mills Limited has sued its rival Royal Mabati Factory Limited claiming infringement of the trademark for its Versatile brand leading to confusion in the market.
• Mabati Rolling Mills claims that the rival firm, which also manufactures and distributes roofing products, has branded its products ‘Versatile’, a name Mabati Rolling Mills says it has reserved for exclusive use.
• Royal Mabati has dismissed Mabati Rolling Mills’ attempt to seek exclusive use of the term as too ambitious.

Two iron sheet manufacturers have opened a vicious court battle over the ownership of a popular trade name in the roofing products market.

Mabati Rolling Mills Limited has sued its rival Royal Mabati Factory Limited claiming infringement of the trademark for its Versatile brand leading to confusion in the market.

Mabati Rolling Mills, which is associated with billionaire Manu Chandaria, claims that the rival firm, which also manufactures and distributes roofing products, has branded its products ‘Versatile’, a name Mabati Rolling Mills says it has reserved for exclusive use.

Royal Mabati, which has registered its roofing product as Royal Versatile, has dismissed the allegations, arguing that Mabati Rolling Mills is merely feeling the heat from new market entrants.

Mabati Rolling Mills is seeking a permanent injunction restraining Royal Mabati from using the trade name.

“We are seeking a permanent injunction blocking the defendant, whether by its directors, officers, servants or agents, licensees, franchisees or any of them or otherwise from packaging, distributing, advertising, marketing and/or in any way availing to the public its products known as ‘Bricktile’ by use of the descriptive word ‘Versatile’”, Mabati Rolling Mills says in a petition before court.

The company further wants the High Court to have Royal Mabati surrender all roofing tiles and iron sheets branded ‘Versatile’ for destruction. Mabati Rolling Mills claims that it has three brands of roofing materials with the brand name Versatile.

These are Versatile registered in 2004 and 2005, which are colour-coated tile profile iron sheets and Royal Versatile registered in 2013, which is coloured Aluminum-Zinc-coated tile profiled iron sheets.

Mabati Rolling Mills says it has spent Sh586 million since 2006 in marketing and promoting the Versatile brand, and accuses its rival of seeking to benefit from its effort through imitation.

Mabati Rolling Mills argues Royal Mabati’s use of its trade name has caused confusion in the market, leading to consumers purchasing the Royal Mabati roofing material in the belief that it belongs to Mabati Rolling Mills. Royal Mabati registered its trade mark Royal Versatile in 2015 with the Registrar of Trade Marks.

Registration was granted after the application was published in Industrial Property journal and 60 days lapsed with no complaints raised. Mabati Rolling Mills claims that the trade mark was registered six months after the firm was incorporated in 2015.

Mabati Rolliing Mills last year filed a complaint with the Registrar of Trade Marks seeking to strike out the registration. The matter is before the High Court for a final decision.

Royal Mabati has, however, denied the allegations and accused Mabati Rolling Mills of feeling uncomfortable with new market entrants who are producing quality products at competitive prices.

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Royal Mabati argues that Mabati Rolling Mills has no trade mark called Versatile or Royal Versatile since the word is incapable of registration as the exclusive property of any party because it lacks distinctiveness.

“The word versatile is a laudatory term, which has its foundation in the English Language and so it cannot be protected as trademark,” Royal Mabati says, adding that the word is used in the roofing products industry to refer to the quality, durability and integrity of the roofing tiles.

Royal Mabati has therefore dismissed Mabati Rolling Mills’ attempt to seek exclusive use of the term as too ambitious.

It has accused Mabati Rolling Mills of stalking, spying on and tracking its delivery tracks and of running aggressive smear campaigns on social media aimed at damaging the reputation of its business.