Who Owns a Name? Unpacking the Judgement in Masista v Ireru

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In a November 2024 decision by the High Court of Kenya, Catherine Masista & Anor. v Samantha Ireru [2024] KEHC 14375 (KLR), the court was tasked with determining the boundaries of trademark ownership in the beauty and fashion space, specifically when the contested use relates to a personal name. The plaintiffs, Dr Catherine Masista and Andras Rozsa, founders of the well-known “Samantha” brand in Kenya, sought injunctive relief against Samantha Ireru, a makeup artist trading under the name “Colour by Samantha”. At the core of this dispute was the plaintiffs’ registered trademark and the question of whether Ireru’s use of her given name in commercial activity amounted to infringement.

The plaintiffs argued that they were the rightful proprietors of the ‘Samantha’ trademark, registered across 12 classes, including cosmetics and beauty care. Their brand, they claimed, had enjoyed consistent use since 2004, particularly through “Samantha Bridal Weddings”, a magazine and platform offering everything from bridal advice to beauty services and training. As their brand expanded into different segments of the fashion and beauty industry, including certified makeup application training, the plaintiffs had built significant goodwill. This, they alleged, was being unlawfully leveraged by the defendant.

The defendant’s position was that the name “Samantha” was not only her legal name, but one by which she was popularly known within her industry. She denied manufacturing beauty products or causing confusion in the market, stating that her work was largely referral-based and distinct from the plaintiffs’ commercial operations. Importantly, she did not attend the trial—leaving the plaintiffs’ assertions uncontested.

This case spotlights a longstanding tension in trademark law: the right of a person to use their own name in trade versus the exclusive rights granted by trademark registration. The Kenyan Trade Marks Act, like many jurisdictions, provides that once a trademark is registered, the proprietor is entitled to exclusive use in respect of the registered classes. Section 7 of the Act states clearly that infringement occurs when a third party, without authorisation, uses a mark that is “identical with or so nearly resembling it as to be likely to deceive or cause confusion”. The issue, then, was whether the name “Colour by Samantha” fell within this definition—despite being based on the defendant’s legal name.

The High Court of Kenya ruled in favour of the plaintiffs. In its reasoning, it emphasised that trademark infringement is a strict liability tort; the defendant’s intention or awareness is immaterial. Once the plaintiffs established ownership and demonstrated a likelihood of confusion, they were entitled to protection. The fact that the defendant did not manufacture the products herself or operated through referrals did not negate the likelihood that her use of the name could mislead consumers into believing an association existed. The plaintiffs' mark, registered across classes relevant to cosmetics and beauty services, granted them protection precisely against such commercial encroachment.

The decision leans heavily on precedents that affirm the strength of trademark registration, including the Pharmaceutical Manufacturing Co v Novelty Manufacturing Ltd case, where it was held that infringement does not require proof of malice or intent. The registration alone, if valid, secures a trader’s right to exclusivity. Likewise, the court cited English jurisprudence to reinforce that allowing the defendant to continue using the name would confer on her a statutory trade advantage she was not entitled to, effectively prejudicing a rival in the same field.

For fashion and beauty entrepreneurs in Kenya, particularly those whose brands are built around personal names, this case raises a crucial point. While using one's own name in business is generally permissible, it is not an unfettered right, especially where that name has been registered and commercially developed by another party. This judgment clarifies that in the eyes of the law, the reputation and recognition attached to a trademark outweigh the personal interest of a name-holder, at least in cases where confusion is probable and harm to brand equity can be established.

As fashion brands increasingly hinge on personal branding, creatives must exercise caution. The success of a brand like “Colour by Samantha” may rest on authenticity and personal identity, but without the necessary due diligence, it risks legal repercussions when encroaching on existing intellectual property. Legal name or not, the market does not operate in a vacuum, and consumers’ perception, shaped by similarity in branding, often carries the most weight in a court of law.