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.

Victoria Pumps Ltd & another v Kenya Ports Authority & 4 others

High Court, at Mombasa

September 3, 2002

Otieno J

Miscellaneous Civil Application No 285 of 2002

Contempt of court – disobeying a court order – court order contained in ruling dated 31st January but delivered on 8th February of the same year– registrar certifying order as having been given on 31st January – whether such certification proper - when order could be deemed to have taken effect–– penal notice forming part of the order rather than being appended at the end of the order – whether such form proper – failure to effect personal service of order–– effect of such failure.

Civil Practice and Procedure – service of court process – service of court order and penal notice on a party – how such service should be effected– – effect of failing to effect personal service – acknowledgment of service.

The applicants sought orders that certain employees of the first respondent be committed for contempt of a court order allegedly issued by Waki J on 31st January, 2002 ordering the release of some two containers.

The ruling said to have been disobeyed was dated the January 31, 2002 but it was not delivered until February 8, 2002 by Ouna J on behalf of Waki J. However, the order allegedly served on the first respondent’s employees was signed by the Deputy Registrar at Mombasa and stated “Given under my hand and the seal of the Court on this 31st Day of January 2002”.

The employees of the first respondent denied that they had been personally served with the order and penal notice. They also stated that one of the containers had been moved to a customs warehouse pursuant to a legal notice issued by the Customs Department before the order was issued and that as regards the other container, the applicants had failed to collect it despite being invited to do so.

The Process Server’s affidavit of service deponed that when he went to the offices of the first respondent, he was informed that according to the rules of the corporation, he could not personally serve the employees concerned and he was referred to the corporation’s Head of Legal Services upon whom he effected service. The Process Server, however, did not state by whom he had been thus informed and referred.

 Held:

1. On January 31, 2002 before the ruling was delivered, there was no ruling capable of being disobeyed or obeyed as the same ruling had not been delivered and no one could be said to have known about it so as to obey it or to disobey it. The ruling could only have been issued on February 8, 2002 when it was delivered and it could only have taken effect on that date or thereafter.

2. The Deputy Registrar in Mombasa could not even physically have sealed the ruling in Nairobi on January 31, 2002 as purported in the order

3. Where a party is seeking committal to civil jail against the other party on grounds that the order delivered by court has been disobeyed, the party sought to be committed or cited for contempt must be personally served with a properly extracted order which must also have a penal notice appended to it. The penal notice in this case was not properly appended as it should have been at the very end of the order and not part of it.

4. The Process Server had not stated the person who had informed him that he could not effect personal service on the employees concerned and who referred him to the corporation’s lawyers. There was nothing to indicate whether either or both of those employees had been approached at all or whether an attempt was made to effect personal service upon them.

5. Moreover, one of the endorsements on the reverse part of the copy of the order bore the “Received” stamp of the Corporation Secretary and Head of Legal Services but it did not state that he received it on behalf of the two employees concerned.

6. The Court was not satisfied that the order extracted from the ruling of Waki J on January 31, 2002 and delivered at Mombasa on February 8, 2002 was personally served on the proper persons as required by law.

7. In any case, as far as regards one of the containers, the order was not capable of being enforced as it had been issued long after that container had been removed from the possession and control of the alleged contemnors. There was no evidence of contempt of court as regarded the other container since the applicants had not rebutted the allegation that they had failed to collect it after being invited to do so.

Application dismissed.

Cases

Nyamogo & another v Kenya Posts & Telecommunications Corporation  (1993) LLR 2152

Statutes

1. Civil Procedure Rules (cap 21 Sub Leg) order XVIII rule 3

2. Customs and Excise Act (cap 472) section 27(5)

Advocates

Mr Jilo for the 1st Respondent.

Khelef Khalifa El-Busaidy v Commissioner of Lands & 2 others

High Court, at Mombasa

September 1, 2002

Onyanya J

Civil Case No 613 of 2001

Civil Practice and Procedure – preliminary objections – applicable law – circumstances in which preliminary objections may be raised and argued – matters that cannot be decided at the preliminary stage.

Locus Standi – representative suits – existence of sufficient legal interest – requirement for leave to file suit on behalf of others – Civil Procedure Rules order I rule 8 – lack of locus standi in Kenya visa vis the English legal position.

Locus Standi – public interest litigation – whether a member of the public has locus standi to sue for the improper allocation of a public park to a private entity – principles the courts should apply in assessing locus standi.

The plaintiff/applicant filed an application seeking orders of injunction restraining the defendants from dealing and/or alienating a public park pending the determination of the main suit. The applicant’s grounds in support of the application were that there was no basis either in fact or in law upon which the 1st defendant could have proceeded to grant any leasehold title to the subject park. The applicant further argued that the plot comprised of a public park for many years and had not ceased to be such public park and that its alienation was null and void. The defendants/respondents responded by filing a notice of preliminary objection arguing that the plaintiff lacked the locus standi to bring the suit against the defendants and that the suit was bad in law as it contravened the mandatory provisions of the Government Lands Act (Cap 280) and that it was time barred.

 Held:

1. The issue as to whether or not the suit was time barred, was a matter of fact which could only be established by evidence. It therefore could not be decided at the preliminary stage.

 2. The origin of the title of the subject land had to be investigated to establish whether or not the title was an absolute title under the Registration of Titles Act and whether or not the conversion of the said title to operate under the Government Lands Act (Cap 280) was proper and lawful and therefore effective and not null and void.

3. The defendant’s preliminary point was not based on a commonly accepted set of facts and the set of facts therein could not therefore be the basis of a preliminary point of objection as understood in law.

4. The legal position in England on locus standi has always been the position in Kenya.

5. For a party to have a locus standi in a suit, he ought to show that his own interest particularly has been prejudiced or is about to be prejudiced. He must show that the matter has injured him over and above the injury, loss or prejudice suffered by the rest of the public. Otherwise public interests are litigated upon by the Attorney-General.

6. Where there are numerous persons having the same interest in one suit and one of such persons wishes to sue, he has to do so for himself and on behalf of others in a representative capacity as per the requirements of order I rule 8 of our Civil Procedure Rules.

7. It is mandatory that leave of the court has to issue before the suit is filed and that the court has mandatorily got to make a direction that notice of the institution of the suit has to be given to all parties concerned preferably through the print media or as the court will deem sufficient.

8. (Obiter) If the courts find that any principle upon which our economic and social or other structures hinge is threatened due to dependency upon any English legal principle which has ceased working as it ought in the best interest of our society, the court should respond to the situation by adjusting the principle to suit our circumstances even if that will mean deviating away from the old basic English principles.

9. The plaintiff having felt that he had been deprived of his enjoyment of the subject plot as a public park had a right to seek rectification of the alleged wrongful acts on his own behalf.

10. The plaintiff had a right to protect his right even if the result of it would be that other members of that class may end up benefiting. It is for this reason that the provisions of order I rule 8 and 8(3) of the Civil Procedure Rules permit a person to apply to court to be enjoined as a party if he feels that the suit is filed on his behalf or for his benefit.

11. (Obiter) This application raised the issue of whether or not the Attorney General, who is the protector of public interest in the now notorious issue of land grabbing, has played his part in the manner he should to protect the state and the public institutions from losing public land to private individuals.

 12. The defendants’ preliminary objection on a point of law amounted to no such preliminary objection because the issue of limitation under section 136(1) of the Government Lands Act, (Cap 280) stood to be decided on evidence.

13. The defendants’ preliminary objection that the plaintiff had no locus standi was unsustainable.

Preliminary objections dismissed.

Cases

1. Mukisa Biscuit Manufacturing Co Ltd v West End Distributors Ltd [1969] EA 696

2.Thorne Rural District Council v Bunting [1972] All ER 439

3. Law Society of Kenya v Commissioner of Lands and others High Court Civil case No 464 of 2000

4. Gouriet v Union of Post Office Workers [1977] 1 All ER 696; [1977] 3 All ER 70; [1977] 3 WLR 300

5. Niaz MJ Mohamed v Commissioner of Lands High Court Civil Case No 423 of 1996

6. Kenya Bankers Association v Minister for Finance & another [2002] KLR 61

7. Campos & D’Cruz (representing members of the Goan Institute) v De Souza & others (1933) 15 KLR 86

8. Odinga, Raila v Hon Justice Abdul Majid Cockar High Court Miscellaneous Application No 58 of 1997

9. Law Society of Kenya v Commissioner of Lands and others Nairobi Civil case No 464 of 2000

10. Omar, Babu & others v Edward Mwirania & another High Court Civil Case No 1 of 1996

11. Attorney General (on the relation of McWhirter) v Independent Broadcasting Authority [1973] 1 All ER 689; [1973] QB 629; [1973] 2 WLR 344, CA

Texts

1. Jacob, IH et al (Eds) (1980) Atkin’s Encyclopedia of Court Forms in Civil Proceedings London: Butterworths 2nd Edn Vol XXX p 4

2. Hailsham, Lord et al (Eds) (1982) Halsbury’s Laws of England London: Butterworths 4th Edn Vol XXXVI paras 216, 230

Statutes

1. Civil Procedure Rules (cap 21 Sub Leg) order I rule 8; order XVI rule 9

2. Government Lands Act (cap 280) section 136(1)

3. Registration of Titles Act (cap 281)

4. Registered Land Act (cap 300)

5. Rules of the Supreme Court order 16 rule 9 [UK]

Advocates

Mr T A Taib for the Plaintiff

Mr Mabeya, lead defence counsel & Miss Mibiya, State Counsel, for the first Defendant.

Mr Ouma for the Second & Third Defendants.