Beiersdorf  East Africa Limited v Emirchem Products Limited

High Court, at Nairobi

September 5, 2002

Mbaluto J

Civil Case No 559 of 2002

Injunctions – interlocutory injunction – application for interlocutory injunction – matters that the court can determine at the interlocutory stage – principles applicable in applications for injunctions – tests to be applied.

Intellectual Property - trade marks – infringement – meaning of infringement – applicable law – facts supporting probable infringement – infringement likely to cause confusion and capable of occasioning harm to the holder - applicable principles in get up cases – trade mark cases and reference to precedents. The plaintiff filed an interlocutory application against the defendant for infringement of its trade mark.

The plaintiff claimed that the get-up of the jar in which the defendant marketed its product was so designed as to pass off the product as that of the plaintiff and that the defendant was using exactly the same type face for the name as did the plaintiff.

The defendant denied that its product was similar to or that it infringed the plaintiff’s trademark as alleged. The defendant therefore challenged the plaintiff’s claim for an interlocutory injunction.

 Held:

1. In interlocutory applications the court cannot conclusively determine the issue of infringement of copyright; it can only decide whether the plaintiff’s suit has a probability of success.

2. The Trade Marks Act (cap) section 7 gives the proprietor of a trade mark exclusive user of that trade mark and any person who wishes to use it has to do so with a license from the proprietor.

 3. The evidence before the court confirmed that there were striking similarities and resemblance in the defendant’s trade mark and those of the plaintiff.

4. The similarities between the two trademarks were sufficiently similar as to cause confusion to consumers particularly when it was appreciated that the defendant, a new entrant in the market, had the freedom to choose any other name. It is probable that the choice of similar name was not accidental.

 5. In the cases concerning trade marks reference to other cases is not of much assistance and each case must ultimately be decided on the basis of its own peculiar facts.

 6. The law on the subject of passing off is clear and settled andss the principles are that
a) the plaintiff must establish a goodwill or reputation attached to the goods or services with an identifying get-up,
b) the plaintiff must demonstrate a misrepresentation by the defendant to the public leading or likely to lead the public to believe that the goods offered by him are the goods or services of the plaintiff;
c) 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.

7. The plaintiff’s case is strengthened by the fact that he did not acquisesce in the use of the trademark by immediately lodging a complaint with the industrial property office which complaint was the subject of these proceedings.

8. The acts of the defendant constituted infringement and also raised a real probability of confusion to customers; which confusion was likely to cause irreparable damage to the plaintiff which could not be adequately compensated by an award of damages.

Application allowed, injunction granted.

Cases

1. Giella v Cassman Brown & Co Ltd [1973] EA 358

 2. Reckitt and Colman Products Ltd v Borden Inc and others [1990] 1 WLR 491

 3. Parke Davis and Co Ltd v Opa Pharmacy Ltd [1961] EA 556

4. Cut Tobacco Kenya v British American Tobacco (K) Ltd Civil Appeal No 126 of 2000

Statutes

1. Civil Procedure Rules (cap 21 Sub Leg) order XXIX rules 1, 2

2. Trade Marks Act (cap 506) section 7

 Advocates

Mr Oyiembo for the Defendant.