ETHIOPIA – Walia as a name of a beer belongs to Kangaroo Plast Plc, the Federal Supreme Court has decided, dealing a blow to Heineken Brewery S.C. which had invested heavily to promote the Walia brand.
The court’s February 2, 2017 decision affirmed a ruling in favor of Kangaroo passed by the High Court on October 11, 2015, that Heineken had wrongly appropriated Kangaroo’s trademark.
Kangaroo plans to use the Walia brand when it completes a beer plant it’s constructing in Modjo, Oromia Regional State.
Walia Ibex is a coveted name since it describes an endangered animal only found in northern Ethiopia in the Simien Mountain National Park.
Kangaroo registered the name Ibex as a registered trade mark in 2011 with the Ethiopian Intellectual Property Office (EIPO).
Earlier, Kangaroo Plast was the major local distributor of the Heineken beer and later in 2010, the two had begun working to form a partnership for a new brewery.
The partnership agreement has since terminated, ending Kangaroo’s role as a distributor as well as prospective partner.
Three years later, Heineken applied for Walia as a trademark but was rejected by EIPO, modifay the name Walia, or to come up with a new name.
Heineken in stead of abiding by the Offices demand it has reinstate its claim to take over the name by stating that Kangaroo had allowed three years to elapse before using the Walia Ibex name, which it claimed made Kangaroo’s trademark invalid due to non-use.
EIPO agreed and awarded Heineken the trademark.
Kangaroo cried foul, claiming that a fire at its foam factory had delayed the launch of its Walia brand beer. It claimed that the delay that allowed its trademark to lapse was circumstances – the fire – beyond its control, a legal term known as force majeure.
EIPO ruled in Heineken’s favor, saying that the fire that delayed Kangaroo happened at its foam factory and not at its beer plant that was under construction.
By the time Heineken appear at the court through its Power of Attorney, name Mahlet Habtewold. Heineken company gave full power of attorney to a Mahlet to “act on our behalf in all manners relating to application of trademark registration”.
EIPO has rejected Kangaroo’s claim that the fire caused the delay in the use of the brand name.
The Office backed its decision saying the accident in the foam factory has nothing to do with Kangaroo’s brewery project, since the two companies have a separate legal identities.
Kangaroo took its case to the High Court in 2015, and won.
Heineken then appealed to the Supreme Court, but to no avail, as this week’s ruling showed.
It argue that the Office has to appear and respond as a defendant for the decision it made while allowing Heineken to use the trade mark.
“In the Ethiopian legal framework there is no explicit law that governs corporate relationships,” said Liqu Dametew (PhD), legal expert in Competition Law & Corporate Governance commented back in 2015.
“However, in the absence of such explicit relationships in the law, it is wrong that the tribunal decided that the two companies have separate legal personalities and the accident in one company could not be an excuse for the other.”
“In addition to the tribunal,” Liqu said. “The High Court also committed misinterpretation in saying the two companies are owned by one person and damage incurred by one has a direct relationship with the other,”
Heineken was allowed to use the brand name while the case was in litigation.
A company spokeswoman insisted that Heineken still owns the Walia brand despite the court’s ruling.
“The name Walia and its trademark is still ours,” Serawit Bezabeh, communication head of Heineken told Fortune.