Scotch Whisky Association & 2 others v Africa Spirits Ltd (Commercial Case 502 of 2017) [2026] KEHC 12252 (KLR) (Commercial and Tax) (17 July 2026) (Judgment)

**REPUBLIC OF KENYA** **IN THE HIGH COURT OF KENYA AT NAIROBI** **MILIMANI LAW COURTS** **COMMERCIAL AND TAX DIVISION** **COMM CASE NO.502 OF 2017** **BETWEEN** **SCOTCH WHISKY ASSOCIATION......................................................1ST PLAINTIFF** **DIAGEO BRANDS BV …………………………………..………..…..2ND PLAINTIFF** **UDV (KENYA) LIMITED…………………………………..…………..3RD PLAINTIFF** **AND** **AFRICA SPIRITS LIMITED....................................................................DEFENDANT** **JUDGMENT** **Introduction and Background** 1. By a Plaint dated 19th December 2017, the Plaintiffs filed the present suit against the Defendant. The 1st Plaintiff states that it is a trade association for the Scotch Whisky industry, based in Scotland, UK and it has 68 member companies comprising leading distillers, blenders, and exporters who are responsible for 95% of all Scotch Whisky production. That its stated objects include protecting and promoting members' interests in the production, trade, and sale of Scotch Whisky in the UK and abroad; and prosecuting, defending, and initiating legal proceedings anywhere in the world to defend the Scotch Whisky trade. 2. The 2nd Plaintiff states that it is a company incorporated in the Netherlands in 2004, it is a wholly owned subsidiary of *Diageo PLC* and it is a member of the 1st Plaintiff, involved in production and sale of Scotch Whisky, including exports to Kenya. It lists its brands to include *Glenkinchie*, *Glen Ord,* *Glendullan, Johnnie Walker, King George IV, King William IV, Buchanan's, J&B, Benmore, and Black & White*. The 3rd Plaintiff states that it is a Kenyan company and an appointed distributor of the 2nd Plaintiff's products, including the aforementioned Scotch Whiskies. 1. The Plaintiffs aver that “Scotch Whisky” is defined as whisky wholly produced and manufactured in Scotland, in accordance with the *Technical File for Scotch Whisky* and UK legislation, namely, the ***Scotch Whisky Regulations 2009***. That it has been produced in Scotland for over 500 years, with a strong global reputation, including in Kenya and examples of Scotch Whisky sold in Kenya by the 1st Plaintiff's members include *Glenlivet, Glenfiddich, Glenmorangie, The Macallan, Johnnie Walker, Chivas Regal, J&B, White Horse, Dewar's* and *VAT 69.* That Kenya is a World Trade Organization (WTO) member, requiring it to protect geographical indications under the ***Trade-Related Aspects of Intellectual Property Rights*** (***TRIPS Agreement***) and the Plaintiffs assert that Scotch Whisky is a protected geographical indication under TRIPS. 2. The Plaintiffs further assert that Scotch Whisky is protected in Kenya by various legislation including **section 14** of the ***Trade Marks Act(Chapter 506 of the Laws of Kenya)***, **Articles 2, 22 & 23** of the ***TRIPS Agreement*** as read with **Articles 9, 10**, and **10 bis** of the ***Paris Convention***, **section 21(3)(h),** ***Competition Act***, **section 12** of the ***Consumer Protection Act(Chapter 504 of the Laws of Kenya),* section 9** of the ***Trade Descriptions Act(Chapter 505 of the Laws of Kenya)*** and **Articles 2(5), 2(6), and 40** of the ***Constitution***. The Plaintiffs state that it is widely understood by both the industry and consumers that a product labelled "Scotch Whisky" originates from Scotland, and that the Plaintiffs have a legitimate interest in protecting the integrity of indications of Scottish origin. 3. The Plaintiffs claim that in or about October 2017, they discovered the Defendant selling an alcoholic product under the mark "*GLEN ROCK No. 1 Whisky*" and they allege the brand name, labelling, and advertising, individually and collectively, indicate or are calculated to mislead the public into believing the product is of Scottish origin. They state that this conduct is alleged to amount to passing off, extended passing off, unfair competition, and false trade description. That “Glen" is strongly connected with Scotland as it is the anglicized spelling of the Scottish Gaelic word "Gleann"/"Ghlinne," meaning a narrow valley, that many Scotch Whisky distilleries are located in, and named after, Scottish glens, that numerous Scotch Whisky brands incorporate "Glen" to emphasize Scottish origin and that "Glen" also appears in the names of various Scotch Whisky companies. They further state that "Glen" is also a Scottish first name and surname, that the use of tartan on the label suggests Scottish origin, that the deer and castle imagery on the label is consistent with imagery commonly used on Scotch Whisky labels and that the deliberate non-disclosure of the manufacturer or country of origin on the label is alleged to be calculated to deceive consumers into believing the product is Scottish-made. The Plaintiffs further allege that this labelling by the Defendant implies the product meets Scotch Whisky industry standards, amounting to a false trade description. 4. Building on the claim of investment in maintaining Scotch Whisky's legal and quality standards and their promotional and marketing efforts, the Plaintiffs allege that the Defendant’s brand name, labelling, and advertising are calculated or likely to deceive Kenyan consumers as to origin and contents and that this conduct constitutes unfair competition and is unlawful. The Plaintiffs claim the Defendant's conduct is likely to adversely affect the Scotch Whisky industry and the Plaintiffs' business by causing confusion and denigrating the integrity of Scottish geographical indications, lowering sales of genuine Scotch Whisky in Kenya, discouraging consumers from buying authentic Scotch Whisky after unwittingly purchasing the Defendant's product, causing irreparable damage to the 1st Plaintiff and its members and unlawfully cashing in on Scotch Whisky's goodwill 5. The Plaintiffs state that on 10th March 2017, the Defendant filed Trade Mark Application No. 96330 seeking to register the mark *"SCOTT'S CHOICE (words)”* in Class 33, for use on whisky, gin, vodka, spirits, wines, and other liquors without limitation as to origin, meaning it could be used on whisky produced anywhere, including Kenya. This application was advertised in the Kenya Industrial Property Journal on 30th June 2017 and the Plaintiffs allege that "SCOTT'S CHOICE," like "GLEN," indicates Scottish origin and the 1st Plaintiff filed opposition proceedings before the Registrar of Trademarks on 25th August 2017, on the ground that the mark is likely to mislead as to origin if used on whisky other than Scotch Whisky. These opposition proceedings were still pending hearing and determination at the time this suit was filed and the court (Okwany J.,) declined to stay the proceedings herein in its ruling of 28th October 2021. 6. For the above reasons, the Plaintiffs seek the following prayers: - 7. *A permanent injunction restraining the Defendant whether by itself, its directors, officers, employees, servants, agents, successors and/or assigns from manufacturing, packaging, advertising, marketing, promoting, selling and/or offering for sale, distributing, displaying or otherwise using or dealing with the product sold under the mark "GLEN ROCK No 1 Whisky" in any manner, packaging, shape or form howsoever arising, including (but not limited to) in any bottles, sachets, barrels and/or any container of any form.* 8. *A permanent injunction restraining the Defendant whether by itself, its directors, officers, employees, servants, agents, successors and/or assigns from manufacturing, packaging, advertising, marketing, promoting, selling and/or offering for sale, distributing, displaying or otherwise using or dealing with the product sold under the mark "GLEN ROCK No. 1 Whisky" in any manner packaging, shape or form howsoever arising that incorporates the word 'GLEN', on (but not limited to) any bottles,* *sachets, barrels and/or any container of any form.* 1. *A permanent injunction restraining the Defendant whether by itself, its directors, officers, employees, servants, agents, successors and/or assigns from manufacturing, packaging, advertising, marketing, promoting, selling and/or offering for sale, distributing, displaying or otherwise using or dealing with the product sold under the mark "GLEN ROCK No 1 Whisky" in any manner packaging, shape or form howsoever arising with the impugned label including the use of any images of tartan, on (but not limited to) any bottles, sachets, barrels and/or any container of any form.* 2. *A permanent injunction restraining the Defendant whether by itself, its directors, officers, employees, servants, agents, successors and/or assigns, from using on or in relation to any drink which is not Scotch Whisky, i.e. whisky wholly produced in Scotland in accordance with UK legislation, the geographical indication "Scotch Whisky" or any other mark or name that includes the word "Scotch", or "Scotland" or any mark, sign, indicia, device or emblem that is in itself indicative, suggestive or evocative of Scotland or which alludes to or suggests a nexus or association with Scotland or Scotch Whisky such as (but not limited to) a name including the word "GLEN" or "SCOTT" or use of a tartan device or from passing off any of the Defendants' Products as Scotch Whisky.* 3. *Delivery up by the Defendants to the Plaintiffs, all stock of the Defendant's Product with the mark "GLENROCK No. 1 Whisky" and with the impugned labels, and any brochures, leaflets, marketing and other materials featuring the impugned mark together with a list of all the premises where the impugned product has been delivered and/or distributed by the Defendant, and a list of all the Defendant's current* *distributors.* 1. *An inquiry as to damages or at the First Plaintiff's option, an account of profits.* 2. *A declaration that the labelling and get up of the Defendant's "GLENROCK No. 1 Whisky" constitutes a false trade description as contemplated under the Trade Descriptions Act (Cap 505), Laws of Kenya.* 3. *A declaration that the sale, manufacture, advertising and marketing of the Defendant's "GLENROCK No. 1 Whisky" constitutes unfair competition as contemplated under the Competition Act, 2010.* 4. *A declaration that the sale, manufacture, advertising and marketing of the Defendant's "GLENROCK No. 1 Whisky" contravenes the provisions of the Consumer Protection Act, 2012.* 5. *General damages.* 6. *Interest.* 7. *Costs of the suit.* 8. The Defendant responded to the suit through Statement of Defence dated 30th January 2018. It states that it is a Kenyan company and is the producer, blender, bottler, and marketer of the *Glen Rock No. 1 Whisky* and that it has never manufactured Scotch whisky. The Defendant maintains its brand is wholly Kenyan in origin and inspiration, with no nexus to Scotland. That the *Glen Rock No. 1 Whisky* is a unique product distilled and blended using Kenya's own resources by being brewed, blended, and packaged in Kenya in line with the Defendant's "manufacture in Kenya, buy Kenya, build Kenya" ethos. That the Defendant is not a Scottish company and has no Scottish/European subsidiary, that the brand is owned by entrepreneurs from the Mount Kenya region and is inspired by "Glen" meaning "small valley", which is an ordinary English/Gaelic-derived noun, referencing the valleys of Mount Kenya and; "Rock", referencing Kenyte, a rare fine-grained rock found only in two places worldwide, Mount Kenya and Antarctica as documented by J.W. Gregory in 1900. 9. The Defendant states that the brand's trade dress incorporates the Maasai shuka/kikoi chequered pattern, an expression of indigenous Kenyan cultural pride, which it claims, is unrelated to Scottish tartan. That the castle imagery is inspired by naturally curved caves on Mount Kenya's Baguret route, dubbed the "Highland Castles," used as camping sites for mountaineers and not Scottish castles. The Defendant also notes other non-Scottish castles in Kenya such as *Lord Egerton Castle, Lord Grogan Castle, Taafaria Castle* and that "Castle" is a real place name in Thika, Central Kenya, near the Defendant's distillery. The Defendant adds that the deer image is said to be inspired by wildlife resting in the Highland Castle caves and the Defendant's colour scheme of red, blue, green is tied to Maasai beadwork/shuka symbolism, not Scottish tartan 10. The Defendant invokes **Article 11** of the ***Constitution*** of Kenya as the legal basis protecting its trade dress and that its distillery is located in Thika, Kiambu County, near Mount Kenya, along "Castle Road". The Defendant cites other examples of culturally-inspired trade dress such as *MIA Wines & Spirits'* "*Mara*" wine brand and other liquor brands using animal imagery such as *Famous Grouse*, *Black* *Grouse* and *Bad Dog* which it deems as normal industry practice. 1. The Defendant denies ever passing off its product as Scotch whisky or as originating from Scotland or deliberately withholding the manufacturer/origin. It avers that Kenyan whisky consumers are "persons of high discernment" unlikely to be confused, going so far as to say only "morons in a hurry" would confuse the products. The Defendant notes that its bottle is rectangular with smothered corners, unlike typically round Scotch bottles and features an embossed lion on the shoulders, with the lion being one of Kenya's "Big Five," featured on Kenyan currency and the coat of arms, and traditionally significant in Maasai culture as a rite of passage symbol. 2. The Defendant contends that the Kenyan public has grown accustomed to many "Glen"-prefixed liquor brands and is not confused by them and that no one can claim exclusive rights over "Glen". That "Glen" is an ordinary English dictionary word, it is also a common personal first name or surname and it is not a registered trademark of any Plaintiff anywhere in the world, and the Plaintiffs hold no intellectual property rights over it. That numerous non-Scottish companies and products use "Glen," including *Glen & Company*, a US architecture firm, *Glen Line*, a Glasgow shipping company, *Glenora Distillers* and *Glen Breton* in Canada, Glendalough in Ireland, *Glen Oaks* in Australia, *Glen Kellan* in the Isle of Man, and *Glann Armor* in France. It presents that the mark should be assessed as an integrated whole, not dissected into parts to manufacture false similarity. 1. The Defendant states that none of the Plaintiffs are proprietors of any "*Glen*" trademark and therefore lack enforceable rights and that the 1st Plaintiff has not shown any agreement assigning it rights by its purported 68 member companies and lacks locus standi to enforce Intellectual Property rights on their behalf. It characterizes the 1st Plaintiff as merely a "lobby group" and or “guild” whose primary object is to fight and kill competition on behalf of its members, with no legitimate interest in this matter. That the Plaintiffs have demonstrated no loss, prejudice, or damage and that they are improper parties to the proceedings. 2. The Defendant states that this suit is an attempt by the Plaintiffs to unfairly stifle legitimate competition and monopolize the whisky market and that it would effectively assert the Plaintiffs are the sole entities in the Commonwealth entitled to produce, package, distribute and/or market whisky which is contrary to the ***Constitution***and other laws. That the suit is an "ingenious ploy" to distract the Defendant and hinder its commercial venture and is intended to close down the Defendant's distillery and halt production of its well-known, popular brand, disguised as a passing-off claim. 3. The Defendant argues that passing off actions address confusion from trade dress, not standardization or trade secrets, and that mere manufacture, sale, and advertisement of a product does not automatically give rise to a passing-off claim. That the ***Scotch Whisky Regulations*** and Technical File of the UK are said to have no legal force in Kenya and are inapplicable to Kenyan producers and that the "unspecified" Scotch Whisky industry standards are said to have no legal foundation in Kenya. 4. The Defendant also raises objections to the Plaintiffs’ reliance on the pending "Scott's Choice" trademark proceedings by stating that they introduce a separate and independent cause of action involving an entirely different mark, and no prayers are sought relating to "Scott's Choice". That it would be prejudicial for the Court to address matters pending in another forum without hearing the parties in that forum. 5. For the above reasons, the Defendant prays for judgment against the Plaintiffs that the Plaintiffs' suit be dismissed with costs and the court certifies the cost of two counsel for the Defendant and that it be awarded compounded interest on same. 6. The matter was set down for hearing where the Plaintiffs presented three witnesses; Jean Okech-Nyawara (PW1), the 3rd Plaintiff’s Head of Marketing – Spirits who relied on his witness statement dated 26th April 2023, Andrew Gordon Swift(PW2), a solicitor practicing in Scotland, UK who relied on his substituted witness statement dated 12th November 2021 and Tiberius Otsieno (PW3), a Private Investigator at *Speed Chase Services Limited* who relied on his witness statement dated 27th June 2018. On its part, the Defendant presented two witnesses; Kepha Githu Gakure(PW3), the Defendant’s Manager in its Finance and Tax Department who relied on his witness statement dated 14th February 2023 and Stephen Kamore (DW2), the Defendant’s Brand Manager who also relied on a witness statement of the same date. 7. The Plaintiffs produced the Lists and Bundles of Documents dated 19th December 2017(PExhibit 1), 27th June 2018 (PExhibit 2) and 12th November 2021 (PExhibit 3). The Defendant produced the List and Bundle of Documents dated 4th December 2018(DExhibit 1-34). After the hearing, the parties were directed to file written submissions which are now on record and the parties’ counsel were able to orally highlight them and together with the pleadings and evidence, I will be making relevant references to them in my analysis and determination below. **Analysis and Determination** 1. Noting that the present proceedings are civil in nature, it is not lost that the court’s determination of this matter is on a balance of probabilities and is guided by the principle that he who alleges must prove. Denning J., in **Miller v Minister Of Pensions [1947]2 All ER 372** discussed the burden of proof and he stated as follows:- *“****That degree is well settled. It must carry a reasonable degree of probability, but not so high as is required in a criminal case. If the evidence is such that the tribunal can say: ‘we think it more probable than not’, the burden is discharged, but, if the probabilities are equal, it is not. Thus, proof on a balance or preponderance of probabilities means a win, however narrow. A draw is not enough. So, in any case in which the tribunal cannot decide one way or the other which evidence to accept, where both parties’ explanations are equally (un) convincing, the party bearing the burden******of proof will lose, because the requisite standard will******not have been attained.”*** 1. The aforementioned position has now been espoused by our superior courts and finds statutory comfort in **sections 107 and 108** of the ***Evidence Act(Chapter 80 of the Laws of Kenya)*** which provide as follows: - ***107. Burden of proof.*** *(1) Whoever desires any court to give judgment as to any legal right or liability dependent on the existence of facts which he asserts must prove that those facts exist.* *(2) When a person is bound to prove the existence of any fact it is said that the burden of proof lies on that person.* ***108. Incidence of burden.*** *The burden of proof in a suit or proceeding lies on that person who would fail if no evidence at all were given on either side.* (Also see **Ignatius Makau Mutisya v Reuben Musyoki Muli [2015] KECA 612 (KLR**) 1. From the parties’ submissions, I find that the called is to determine the following abridged issues: 2. *Whether the Plaintiffs have locus standi to institute this proceeding.* 3. *Whether the manufacture, advertising, marketing and sale of the* *Defendant’s product amounts to passing off or extended passing off.* 1. *Whether the Plaintiffs have suffered any loss or damage capable of compensation.* 2. *Who should bear the costs of the suit.* **Locus Standi** 1. The Defendant stated and submitted the 1st Plaintiff is "only a lobbying organization," and not a trader and it cannot acquire goodwill, and none of its goods/trademarks can be passed off or misrepresented in the market. That it may have standing to lobby for policy or legislative change but lacks standing to pursue proceedings over trade and brand names independently owned and registered by third parties, absent proof of assignment, authorization, or legal interest in the "Glen" marks. The Defendant further state that the 2nd and 3rd Plaintiffs similarly lack standing to enforce claims over brands and trademarks they do not own. The Defendant submits none of the Plaintiffs produced probative evidence that they own any contested brand, traded in the brands, had goodwill in the contested brands and it termed calling them as “busy bodies". The Defendant also added that the Plaintiffs do not have any clientele that were deceived or misrepresented to their detriment. 2. The Defendant points out that PW1 and PW3's own evidence showed the 3rd Plaintiff trades in only one "Glen"-prefixed whisky brand, that is "*Glenkinchie*", with the other Glen-prefixed whiskies sold by the Plaintiffs' competitors, not the Plaintiffs themselves. In response, the Plaintiffs submit that *locus standi* concerns whether the claimant has a genuine stake in the matter, requiring only a real and substantial connection to the subject matter, not ownership. That the subject matter here is the goodwill or reputation attached to Scotch Whisky, including "Glen"-prefixed whiskies in Kenya and the Plaintiffs submit that a real and substantial connection is shown because the 2nd Plaintiff manufactures or distributes Scotch Whiskies exported to Kenya, the 3rd Plaintiff distributes those Scotch Whiskies in Kenya and the 1st Plaintiff is mandated by its members, including the 2nd Plaintiff, to protect Scotch Whisky trade interests in Kenya. 3. The Plaintiffs submit that there is a distinction between the right to be heard and the right to claim ownership of the suit's subject matter and that the Plaintiffs need not prove ownership of "Glen" to have standing to be heard. As such, the Plaintiffs contend that they have the requisite locus standi. 4. In its submissions, the Plaintiffs rely on inter alia, this court’s (Dr. Mugambi J.,) decision in **Superon Schweisstechnik India Ltd v Oxychem Africa Limited; Registrar of Trademarks (Interested Party) [2025] KEHC 8298 (KLR)** where it was stated as follows:- *7****…….It is trite law that where a party’s locus standi is in issue, and the court finds that the party lacks the requisite standing, the suit may be rendered incompetent and liable to striking out.*** ***8. Locus standi, as defined in Black’s Law Dictionary (9th Ed, page 1026), refers to a party’s right to bring an action or to be heard in a given legal forum. It signifies the legal capacity to initiate proceedings and to seek judicial redress before a competent court. It serves as a substantive threshold question that determines whether a party has a sufficient interest in the subject matter to warrant the court’s attention. The Courts have consistently affirmed this principle.*** ***9. In Law Society of Kenya v Commissioner of Lands & Others, Nakuru HCCC No. 464 of 2000, the Court emphasized that locus standi is anchored in the party’s demonstrable interest in the issues raised. Similarly, in Alfred Njau & Others v City Council of Nairobi, [1982] KAR 229, the Court held that locus standi is about the sufficiency of a party’s legal or equitable interest in the matter. Thus, the doctrine of locus standi is concerned with whether the claimant has a genuine stake in the matter before the court.*** 1. The Plaintiffs also placed reliance on the decision of Odunga J., (as he was then) in **Nzele David Nzomo v Moses Namayi Anyangu & another [2018] KEHC 8859 (KLR)** where the learned judge held as follows: - *68. I wish to first deal with the issue of locus standi since it may dispose of this suit. The Court of Appeal in Alfred Njau & 5 Others vs. City Council of Nairobi [1982-88) 1 KAR 229; [1976-1985] EA 397; [1983] KLR 625 expressed itself on the matter as follows:* *“Capacity to sue is a matter of mixed law and fact, which is to be decided on legal principles (with common sense coming into it) and not a matter of discretion…The term locus standi means a right to appear in court, and conversely to say that a person has no locus standi means that he has no right to appear or be heard in such and such proceedings…Lack of locus standi and a cause of action are two different things. Cause of action is the fact or combination of facts, which give rise to a right to sue whereas locus standi is the right to appear or be heard, in court or other proceedings; literally it means a place of standing…To say that a person has no cause of action is not necessarily tantamount to shutting the person out of the court but to say he had no locus standi, means he cannot be heard, even on whether or not he has a case worth listening to…Locus standi involves the right to be heard and then determine whether there is or is no reasonable cause of action or defence.”* 1. The aforementioned decisions draw a sharp distinction between *locus standi* which is the right to be heard and cause of action which is whether the claim succeeds on the merits. Lacking a cause of action does not shut a person out of court, but lacking *locus standi* means the person cannot be heard at all. Going through the Defendant’s arguments, I find that much of the Defendant's *locus standi* arguments rest on the merits of the case dressed up as standing as it claims that the Plaintiffs have not demonstrated any loss, prejudice, or damage and none of the Plaintiffs are proprietors of any 'Glen' trademark. Ownership of the mark and proof of damage go to whether the passing off claim succeeds, not to whether the Plaintiffs have a sufficient stake to be heard and conflating the two is precisely the error that superior courts have always warned against. 2. The 1st Plaintiff’s stated object of protecting and enforcing the interests of the Scotch Whisky trade, including through litigation, on behalf of its members has not been disputed and is in itself a real and substantial connection to this subject matter and is consistent with how trade associations are routinely found to have standing to sue on behalf of an industry's collective goodwill. I find this to be essentially the doctrinal basis for extended passing off in persuasive cases like **J Bollinger v The Costa Brava Wine Co. Ltd(No.1)(1960)Ch 262,** which the Plaintiffs' rely on. It involves a class of traders, or a body representing them and they can protect the shared goodwill in a class of goods. Whereas I can agree with the Defendant that the absence of a formal assignment of rights from the 1st Plaintiff’s member companies may be a real evidentiary gap, I find that this goes to whether the 1st Plaintiff can succeed in enforcing a specific right and not to whether it has a genuine stake sufficient to be heard. I therefore find that the 1st Plaintiff has a standing in this matter. 3. The 2nd Plaintiff stated that it manufactures and distributes Scotch Whisky brands exported to Kenya and I find this to be a straightforward commercial and competitive interest and a real and substantial connection to the subject matter of the goodwill in Scotch Whisky in the Kenyan market. I find that its standing on this matter is on solid ground. Similarly, the 3rd Plaintiff distributes those Scotch Whiskies in Kenya and the same reasoning applies. Even though the Defendant's point out that PW1 stated that the 2nd Defendant trades in only one Glen-prefixed brand, with other Glen-prefixed whiskies sold by the Plaintiffs' competitors, this does not defeat its standing as the 2nd Defendant still has a stake in Scotch Whisky generally, and in the "Glen" prefix specifically through its brand, *Glenkinchie*. 4. It is for the above reasons that I find that the Plaintiffs have the requisite locus standi to institute these proceedings as they clearly have the right to be heard herein. This objection by the Defendant fails. **Passing off/Extended Passing off** 1. The Plaintiffs submit that the ingredients of passing off were set out in the case of **Reckitt and Colman Products Ltd v Borden Inc and Others [1990] 1 All ER 873** by the House of Lords and approved by the Court of Appeal in **Nairobi Map Services Limited v Airtel Networking Kenya Limited & 2 others [2019] KECA 701 (KLR)** as follows: - *“…****that the plaintiff must establish a goodwill or reputation attached to the goods or services; secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff; and thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff.*** 1. The Plaintiffs submit that they have satisfied all limbs as it is uncontested that the 3rd Plaintiff has sold the 2nd Plaintiff's Scotch Whisky brands in Kenya since 1990, that other "Glen"-prefixed Scotch Whiskies such as *Glenfiddich, Glenmorangie, Glenlivet* exist in the Kenyan market and that PW2 confirmed Scotch Whisky exports to Kenya totaled over EUR 5.6 million in 2016. 2. Relying onthe Supreme Court’s decision in **Jovet (Kenya) Limited v Bavaria NV [2025] KESC 27 (KLR)** for the definition of goodwill, the Plaintiffs submit that goodwill can arise even from short market presence, given sufficient marketing or promotional investment. As such, they contend that the 2nd and 3rd Plaintiffs' businesses have acquired goodwill in Kenya. 3. They accuse the Defendant of seeking to benefit from the Plaintiffs' built-up goodwill by using the "Glen" prefix, prevalently associated with the Plaintiffs' products, that the overall get-up reinforces this including a tartan pattern highly evocative of Scottish origin, distinct from the Kenyan Maasai *Shuka* pattern, castle and deer imagery consistent with many Scotch Whisky labels and intentional non-disclosure of manufacturing origin. The Plaintiffs refute the Defendant's explanation that "Glen" evokes national pride or African heritage, inspired by Mt. Kenya valleys, tartan inspired by Maa culture, castle inspired by Mt. Kenya caves and Castle Road, Thika and they deem them as an afterthought designed to conceal deceptive intent, citing that DW1 and DW2 confirmed at the hearing "Glen" is not derived from any local language or heritage. That despite seeking national pride" or "African heritage, the Defendant chose a European-origin word rather than a Swahili/African/national name and other "Glen" prefixed Scotch Whiskies were already in the market. They add that as per DW2's own witness statement, the Defendant studied the market looking for something easy to sell and the bottle does not indicate "*Made in Kenya*" or "*Manufactured by Africa Spirits Limited*" 4. The Plaintiffs emphasize that the Defendant first attempted to register "Scott's Choice" which the 1st Plaintiff opposed because "Scott" is evocative of Scottish origin and that only after this opposition did the Defendant launch "Glen Rock Whisky No. 1"which they submitted was clear evidence of a deliberate intention to misrepresent origin, not novel branding. They submit that get-up can become known as indicating a particular trader's goods, so imitation of get-up can amount to passing off and that companies devise distinct identities through labelling, packaging, colour combinations, and design. The Plaintiffs submit that intent is immaterial and it is sufficient that the misrepresentation makes damage to the plaintiff's goodwill a reasonably foreseeable consequence and it need not be shown the Defendant intended to misrepresent its goods as the Plaintiffs'. The Plaintiffs thus aver that the misrepresentation element is met. 5. The Plaintiffs submit that the "Glen" prefix mirrors the 2nd Plaintiff's own brands and that the ordinary Kenyan liquor consumer perceives brands as a whole and does not analyse or dissect details. That the Defendant’s product was placed side-by-side with the Plaintiffs' and other whisky products at competitive pricing in various outlets and PW 3’s Report found 70% of interviewed customers believed the Defendant’s product was imported, not produced in Kenya and this evidence was not challenged by any expert testimony from the Defendant. 1. The Plaintiffs attack DW2's assertion that no confusion is possible as DW2 admitted he cannot speak for customers and had no market study or survey to support the claim and that as a "seasoned liquor trader" with niche technical expertise, DW2 does not represent the standard of an "average consumer." The Plaintiffs thus submit that the likelihood of confusion element has been met in this case. 2. On damage caused, the Plaintiffs submit that once misrepresentation and infringement are established, damages are presumed. Supported by PW1's testimony that the "Glen" prefix and combined with ambiguous labelling and non-disclosure of origin, the Plaintiff submits that this was likely to lower sales of genuine Scotch Whisky in Kenya and discourage customers from buying genuine Scotch Whisky after unwittingly purchasing the Defendant’s product. 3. On extended passing off, the Plaintiffs submit that this protects a descriptive term associated with a distinctive, recognizable product/class of goods and that a group of traders producing goods under a particular mark/description have a collective interest protecting associated goodwill, even where entitlement belongs to a class producing goods in a locality rather than one individual trader and the description is part of their goodwill and a right of property. The Plaintiffs present that the 1st Plaintiff and its members hold collective goodwill in Scotch Whisky, the 2nd Plaintiff is a member of the 1st Plaintiff, a well-known brand with global reputation including in Kenya and members have produced Scotch Whisky in Scotland for over 500 years and exported to 200 countries including Kenya 4. That Scotch Whisky has distinctive recognizable characteristics, including the "Glen-" prefix and that PW2 confirmed "Scotch Whisky" protected under ***TRIPS***, to which Kenya is a signatory and that the South African Supreme Court of Appeal in **Milestone Beverage CC and Others v The Scotch Whisky Association and Others [2020] ZASCA 105** acknowledged the extended passing off principle applies to Scotch Whisky products as distinctive goods with established reputation and goodwill. 5. The Defendant is accused of seeking to benefit from this collective goodwill through the "Glen" prefix and the tartan, castle, deer get-up. For these reasons, the Plaintiffs urge that it has established extended passing off by the Defendant. 6. In its response, the Defendant submits that the aforementioned elements are conjunctive and not disjunctive and failure on any one is fatal to the claim s was held by the court (Meoli J.,) in **Nairobi Pyrotechnics Ltd v Nairobi Sports House Ltd [2023] KEHC 26282 (KLR)**. That goodwill may also arise through marketing or advertising effort as was held in the Court of Appeal of Canada in **Triple Five Corporation v Watt Disney Production (1994) ABCA 120** and South Africa’s Supreme Court of Appeal in **McDonald's Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd. and Another; McDonald's Corporation v Dax Prop CC and Another; McDonald's Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd. and Another (547/95) [1996] ZASCA 82** and that evidence of goodwill must come from members of the public, not the trader itself. 7. The Defendant submits the Plaintiffs failed to prove goodwill in "Glen" or "Scotch Whisky" as PW1 testified the 3rd Plaintiff sells only one Glen-prefixed brand, *Glenkinchie*, and that between 2011-2015 it sold 4,500 litres which translates to 900 bottles or 900 customers annually which it states is too tenuous a base in a country of 50 million Kenyans. That PW1 and PW2 did not know if this whisky was imported for transit to other landlocked countries, and no evidence of actual Kenyan consumption was produced and that PW1 could not identify the source of sales budget data, he had no audited accounts, receipts, or import documents, and conceded the Court could not tell whether the Plaintiffs had generated sufficient goodwill 8. The Defendant submits that relevant goodwill must be goodwill generated in Kenya specifically, since Intellectual Property rights are territorial and citing South Africa's Supreme Court of Appeal in **Victoria's Secret Inc v Edgars Stores Ltd. (428/92) [1994] ZASCA 43** and this court’s (Tuiyott J.,) decision in **Sony Corporation v Sony Holding Limited [2018] KEHC 6604 (KLR)**, foreign goodwill is irrelevant. 9. The Plaintiffs' sales tabulation is said to lack probity as the author's qualifications/expertise are unknown, the data source undisclosed, and it does not show how much was specifically attributable to Glen-prefixed whisky sales, advertising modes, or target audience. By contrast, the Defendant submits it proved it built its own goodwill through painstaking labour/skill, countrywide depots, marketing chains and distribution channel, a fact the Defendant states is uncontested, with PW3 himself confirming the Defendant conducted aggressive marketing with depots countrywide. That PW1 and PW2 conceded the Defendant employed known goodwill-building methods such as mainstream, social and digital media, promotional merchandise, banners, billboards, branded costumes while admitting they could not show similar Plaintiff efforts. As such, it was urged that the Plaintiffs failed the goodwill limb, which alone is fatal and warrants dismissal. 10. The Defendant submits that the court must ascertain actual confusion where goods are already in the market and that even brief market presence is relevant where no confusion was reported by the public, shopkeepers, wholesalers, or supermarkets. That both parties agreed whisky is a luxury good consumed by a sophisticated, elite clientele who are careful purchasers unlikely to be confused and that likelihood of confusion must be assessed globally based on the overall impression of visual, aural and conceptual similarity, focusing on distinctive and dominant components. 11. The Defendant submits that all Plaintiffs’ witnesses conceded no known instance of actual consumer confusion since the product's 2017 launch and that if no confusion arose over an extended period, none may ever occur. 1. The Defendant characterizes the Plaintiffs' extended passing off submission as a feeble attempt as the Plaintiffs’ witnesses could not establish any connection between their allegations and the Kenyan market. That PW2 did not know any Kenyan who had travelled to and from Scotland, he knew no Scottish residents or Scottish-culture institutions in Kenya, he had visited only Nairobi National Park and could not distinguish Scottish tartan from Maasai *shuka* patterns. That witnesses could not successfully impeach evidence of multiple non-Scottish castles in Kenya and DW2 confirmed the originality of the Defendant's get-up "Glen" was inspired by Mount Kenya valleys, the castle image derives from the Defendant's Thika factory location on "Castle Road"; and distinguishing bottle features differ from other whiskies' bottles. 2. The Defendant asserts that the Plaintiffs made no submissions on extended passing off or evocation of geographical indications and led no evidence to substantiate these claims and the Defendant invites the Court to treat these claims as abandoned. In summary, the Defendant submits that other "Glen” prefixed brand owners see no infringement and are not interested in these "Pyrrhic wars," implying the Plaintiffs are acting in cahoots to fight legitimate competition. 3. I have gone through the pleadings, evidence and submissions of the parties. They agree that for one to establish passing off, four factors must be satisfied; Goodwill/reputation attached to the goods, misrepresentation by the defendant to the public, intentional or not, misrepresentation has led/is likely to lead the public to believe the goods are the plaintiff's and actual or likely damage from the erroneous belief ought to have occurred. 4. On the first limb, what is goodwill and how is it to be proved? This question was asked by Tuiyott J.,(as he was then) in **Mjengo Limited v Manji Food Industries Limited [2020] KEHC 2349 (KLR)**and he found an answer in **Commissioner of Inland Revenue v Muller & Co. Margarine Ltd [1901] AC 217; [1900-1903] All ER 413,** where Lord Macnaghten gave a definition of goodwill as follows: *“****What is goodwill? It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of the good name, reputation and connection of a business. It is the attractive force which brings in custom. It is the one thing which distinguishes an old established business from a business at its first start. The goodwill of a business must emanate from a particular centre or source. However widely extended or diffused its influence may be, goodwill is worth nothing unless it has power of attraction sufficient to bring customers home to the source from which it emanates.”*** 1. The question of whether a party has established goodwill is subjective and is dependent on the evidence on record and on a balance of probabilities. PW1 asserted that the Plaintiffs built goodwill in the Scotch Whisky market generally, but on cross-examination he admitted that there were no receipts, audited statements of account, delivery notes or import documents to verify the claimed Kshs.1.3 billion advertising spend. He also could not identify who prepared the sales and budget figures or their source and he further admitted that the Plaintiffs had no promotional merchandise, billboard photos, or client lists before the court. PW3's investigation report shows aggressive marketing by the Defendant’s brand through billboards, banners, and social media, which, if anything, supports the Defendant’s own independent brand-building rather than free-riding. The Defendant's evidence of building goodwill is fairly well evidenced and largely unchallenged and ff the standard is comparative then it is clear to the court that Defendant’s goodwill actually exists in Kenya. 2. No witness could quantify the 3rd Defendant’s specific Kenyan sales of "Glen" prefixed products with primary documentation such as invoices and distributor records and the 4500 litres and 900 bottles of *Glenkinchie* being sold rest on unverified secondary documents. PW1 could not source the sales tabulation and no one could rule out that the whisky was merely transiting Kenya to landlocked markets rather than being consumed here as advanced by the Defendant. PW 1 could not tell the target market, could not tell where the investment went and he could not confirm Kenyan consumption. Territoriality also cuts against the Plaintiffs because it would appear that their claimed goodwill is reputation earned abroad and yet such foreign goodwill does not count as was held in ***Sony Corporation(supra)***. 3. On misrepresentation and likelihood to cause confusion, I note the Defendant’s *GlenRock* label affirmatively discloses "*Blended & bottled by Africa Spirits Limited, Plot No. 18/459, Castle Road, Thika*" and does not claim Scotch origin or Scottish manufacture and the Plaintiffs’ witnesses conceded this in their testimonies. PW 2 also confirmed that no system of geographical indication registration exists in Kenya and there is no local statutory protection being infringed, only a common law or passing off theory resting on consumer perception. "Glen" was conceded by PW2 to be an ordinary English/Scottish-Gaelic word meaning "a narrow valley", used by numerous unrelated brands worldwide and the 1st Plaintiff admitted it has been unsuccessful in all these cases when it previously tried to stop other "Glen"prefixed brands elsewhere. 1. I also note that the bottle shape differs as the *GlenRock* bottle is rectangular or tapered whereas the *Glenkinchie* bottle is cylindrical, the former is green in colour whereas the latter is clear and PW1 explicitly conceded it would be hard for a consumer to confuse clear & green colours. None of the Plaintiffs’ witnesses produced direct evidence of an actual confused consumer and PW3's survey of 87 respondents is the closest thing to empirical confusion evidence, but PW3 conceded that no demographic data was captured, no questionnaire was retained or produced, no data on where interviews occurred, and more importantly, 87 respondents cannot credibly represent millions of Kenyan whisky consumers and PW3 could not defend the sample's representativeness. 2. PW3's finding that 70% of interviewees believed *GlenRock* was imported sounds strong until you look at how DW1 characterized that survey's methodology that the findings were based on consumers' existing knowledge or perceptions of *GlenRock* and not on their reaction to the bottle, get-up, or label itself. A perception survey divorced from the actual visual stimulus does not map cleanly onto the legal question and critically, neither side produced a survey testing confusion at the point of sale. The Defendant’s claim that 30 to 50 people asked for *GlenRock* by name is equally unsupported by any market study, so that cuts both ways but as stated, the burden sits with the Plaintiffs and they have failed to discharge it. It is therefore the court’s finding that the Defendant never misrepresented its brand as that of the Plaintiffs and there is no likelihood of confusion as to the two brands. 1. On damages, since this in passing off is largely presumed once misrepresentation and confusion are made out, this element rises or falls with the above. No witness offered evidence of actual loss suffered by the Plaintiffs attributable to *GlenRock's* presence in the market and PW1 admitted this during cross-examination. The "erosion of goodwill" theory offered that the Defendant’s *GlenRock* dilutes the Scotch category generally was speculative and unsupported by data and PW1 also conceded that competitors legitimately selling genuine Scotch Whisky in the same market could equally erode any shared goodwill, undermining causal attribution to *GlenRock* specifically. I therefore find that the issue of damages has not been independently established. The Plaintiffs' fallback of extended passing off and the collective goodwill in "Glen” prefixed Scotch as a class, though doctrinally available in jurisdictions such as South Africa as was held in ***Milestone Beverage(supra)*** case, I find that this argument was not backed by any targeted evidence against the Defendant as I have found above. 2. Therefore, I am inclined to agree with the Defendant that the Plaintiffs have not proved their claim for passing off, evocation or extended passing off. While the Plaintiffs have not proved that they have substantial goodwill in the Kenyan market, the Defendant has demonstrated that it built goodwill over its brand. The Plaintiffs did not lead any evidence of a single consumer who was ever confused by the Defendant’s brand in the market and further, there was no probative proof of goodwill and the damages suffered. **Conclusion and Disposition** 1. In the upshot, the Plaintiffs’ claim has no merit and it is hereby dismissed with costs to the Defendant. The exhibits produced before court by the parties to be released to the parties who produced them as evidence before court. It is so ordered. **DATED SIGNED AND DELIVERED virtually at NAIROBI this 17TH DAY OF JULY 2026** **............................................................................** **J.W.W. MONGARE** **JUDGE** **IN THE PRESENCE OF** 1. Ms. Mwango for the Plaintiffs. 2. Mr. Mwangi K. M for Defendant. 3. Amos- Court Assistant