Challenges to the validity of an industrial design would not prevent the enforcement of intellectual property rights where the industrial design had not been revoked.

Safepak Limited v General Plastic Limited

Civil Suit No 588 of 2014

High Court at Nairobi

Commercial & Admiralty Division - Milimani

Farah S Amin, J

December 16, 2015

Reported by Beryl A Ikamari

Brief facts

The Plaintiff's claim was that intellectual property rights over its registered industrial design were being infringed by the Defendant. Particularly, the Plaintiff was the registered owner of industrial design number 666 in which the novelty of design was the honey comb pattern applied on the shoulder of containers. The Plaintiff's complaint was that the Defendant had manufactured containers with a similar design. The Plaintiff sought interlocutory orders in the form of an injunction against the Defendant to stop the infraction.

The Defendant opposed the application on grounds that the industrial design should not have been registered as there was an absence of originality in it. Generally the defence of prior art was raised by the Defendant.

Issues

1. Whether the intellectual property rights in a registered industrial design were capable of being protected despite claims of invalidity and lack of originality.
2. Whether the High Court was the proper forum for purposes of questions on invalidity and revocation of an industrial design.
3. Whether the Plaintiff was entitled to an injunction in order to preclude the Defendant from exploiting the industrial design.

Jurisdiction-jurisdiction of the High Court-jurisdiction to revoke and invalidate a certificate of registration of an industrial design-whether the High Court could exercise jurisdiction to revoke a registered industrial design given that the Industrial Property Tribunal had the statutory mandate to consider claims for revocation of such certificates- Industrial Property Act, No 3 of 2001, section 5 & 103.

Intellectual Property Law-industrial design-rights of the owner of an industrial design-rights over an industrial design which was claimed to constitute prior art and to lack originality while the certificate of registration was still in effect- Industrial Property Act, No 3 of 2001, section 5 & 103

Held

1. There was an admission in the sense that the Defendant did not deny producing bottles whose design was similar to the design protected as an industrial design owned by the Plaintiff. Despite arguments that there was no novelty or originality in the design and that the Defendant intended to commence revocation proceedings over the industrial design, those proceedings for revocation had not been commenced and the Certificate of Registration of Design No. 666 was still in effect.
2. Under section 5 of the Industrial Property Act, the Kenya Industrial Property Institute’s functions included considering applications for industrial property rights and granting industrial property rights. Further, under section 103 of the Act, the jurisdiction to grant and revoke or invalidate a registered industrial design was vested in the Industrial Property Tribunal set up for that purpose. Although there were circumstances in which the High Court could intervene as concerns the Tribunal's jurisdiction, those circumstances had not arisen.
3. The Defendant asked the Court to inquire into whether the Registration was properly and appropriately obtained, or alternatively, to declare the registration invalid.  However, such inquiries were within the mandate of the Industrial Property Tribunal as provided for in section 103 of the Industrial Property Act.
4. On the face of it, the Certificate of Registration of Industrial Design no. 666 was valid. There was no challenge to its validity at the appropriate Tribunal set up to deal with such challenges. Therefore, under section 85 of the Industrial Property Act, the owner of the industrial design had exclusive rights to commercially exploit the design. In cases of infringement of those exclusive rights, there was a right to preclude third parties from continuing to perform the acts of infringement.
5. The Defendant argued that the protected design was within the public domain and the honey comb design on the shoulder of a container was in existence before the registration of the Plaintiff's design. However, the Defendant failed to tender evidence on the prior existence of the design.
6. On a prima facie basis the Plaintiff had demonstrated that it was the owner of the industrial design in question. The Plaintiff had shown that a certificate to that effect was obtained after following the set procedure.
7. On a prima facie basis, the Defendant had not shown that the industrial design was void. The Defendant had not referred the question of validity to the Industrial Property Tribunal.
8. As long as the Plaintiff remained the owner of the industrial design, it was entitled to protection which included precluding third parties from exploiting the design. Damages were not a sufficient remedy for the loss of statutory protection. If the injunction was not granted, there was danger that the Defendant would continue to infringe on the Plaintiff's rights over the design.
9. The balance of convenience favoured the maintenance of status quo. Maintaining status quo required the Plaintiff to renew its cross-undertaking in damages in the event that after the trial it was found that the interlocutory injunction should not have been granted.

Application allowed. (Injunction granted.)