Power of Trade Marks Registrar to Permit Further Evidence Under Rule 52: Case of Strategic Industries v Rebecca Fashion (Kenya) Ltd

Rebecca Fashion Freedom Flower Photo by Kilimall 522_05224374934808516_1280 Fashion Idol Style Icon Hair Wig

“An act, it is my view, is not ultra vires if it is found to be within the main purpose, or within the special powers expressly given by the statute to effectuate the main purpose, or if it is neither within the main purpose nor the special powers expressly given by the statute, but incidental to or consequential upon the main purpose and the act is reasonably done for effectuating mandate.” – Justice GV Odunga at paragragh 27.

In a recent High Court ruling in the case of Republic v Assistant Registrar of Trade Marks Ex Parte Strategic Industries Limited & another [2016] eKLR, the court had to determine whether the Registrar of Trade Marks has the power under rule 52 of the Trade Marks Rules to permit further evidence to be adduced after the statutory declaration has been filed under rule 51 of the said Rules.

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Customs Officers Cannot Enforce Intellectual Property Rights: Court of Appeal Judgment in Kenya Revenue Authority v Doshi Iron Mongers

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In the case of Kenya Revenue Authority v Doshi Iron Mongers & another [2016] eKLR, the Court of Appeal was called upon to determine whether Section 5 of the Customs and Excise Act gives an officer of the Appellant (KRA) under the Act powers, rights and privileges akin to those given to a police officer in execution of his duties under Cap 84 of the Laws of Kenya, in particular that such an officer can enforce intellectual property (IP) rights including raids, arrests and seizure of goods not listed under Schedule 8 of the Customs Act.

In the lower court, the respondents had complained that their warehouses in Mombasa and Nairobi were raided between 1996 and 2006 by the appellant for no rhyme or reason, purporting to search for counterfeit, substandard and uncustomed goods particularly ‘BIC’ biro pens, battery cells, and other items at the behest of companies such as Haco Industries who were the assigned users of the trade mark.

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Algeria and Nigeria to Host World Intellectual Property Organization External Offices in Africa

WIPO DOC external offices proposals 2016 may august vote

At the Fifty-Fifth Series of Meetings of the Assemblies of the Member States of WIPO (October 2015), the WIPO General Assembly, at its Forty-Seventh (22nd Ordinary) Session, decided with respect to the issue of new WIPO External Offices, during the 2016/17 Biennium that priority should be given to Africa. For this purpose, Member States were encouraged to submit their hosting proposals to be considered under the Guiding Principles.

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Court of Appeal Settles 20 Year Copyright Dispute: Case of Mount Kenya Sundries v Macmillan Publishers

Macmillan Memorial Library Kenya

A recent judgment by the Court of Appeal in the case of Mount Kenya Sundries Ltd v Macmillan Kenya (Publishers) Ltd [2016] eKLR involved a copyright infringement claim with respect to two maps of Kenya produced between 1985 and 1990 by the Respondent, Macmillan (now known as Moran Publishers). At the High Court, Macmillan had successfully proved that Mount Kenya had reproduced and sold its maps without its authorisation contrary to the Copyright Act. This High Court decision has been discussed previously here.

In the present appeal, the court reconsidered the evidence, evaluated the submissions of both parties in order to determine several key issues including locus standi (standing to sue), copyright ownership of the maps and copyright infringement of the maps.

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Private Prosecutor Can Appear as Witness in Same Criminal Copyright Suit: Case of Albert Gacheru Kiarie and Wamaitu Productions

A recent judgment by the High Court in the case of Albert Gacheru Kiarie T/A Wamaitu Productions v James Maina Munene & 7 others [2016] eKLR is likely to have profound ramifications for the enforcement of intellectual property (IP) rights in Kenya. At the heart of this case is a catalogue of widely popular vernacular songs such as “Mariru (Mwendwa Wakwa Mariru)” which is featured in the video above by Gacheru and produced by the latter’s company, Wamaitu.

According to Gacheru, his music and those of other rights holders he was involved with through his Wamaitu label have all been the subject of piracy and copyright infringement for many years. From 2004, Gacheru was the complainant in a criminal copyright infringement case (Criminal Case No. PP 06 of 2004) and was later granted permission to privately prosecute the case but he was then barred from continuing to undertake the private prosecution for the reason that he intended to serve as a witness in the same case. Gacheru appealed this decision insisting that he should be allowed to act as private prosecutor and witness in his case. The present judgment settles this 12 year old dispute on this matter.

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Goodwill as Constitutionally Protected Property: High Court Case of Bia Tosha Distributors v Kenya Breweries, EABL, Diageo

warm-beer by gobackpackingdotcom Kenya tusker crate eabl

“I am acutely aware of the far reaching consequences of my conclusive finding that purely constitutional issues and questions have been borne out of a hitherto commercial relationship and hence the court’s jurisdiction rather than agreed mode of dispute resolution. I however do not for a moment view it that the framers of our Constitution intended the rights and obligations defined in our common law, in this regard, the right to freedom of contract, to be the only ones to continue to govern  interpersonal relationships.” – Onguto, J at paragraph 101 of the ruling.

A recent well-reasoned ruling by the High Court in the case of Bia Tosha Distributors Limited v Kenya Breweries Limited & 3 others [2016] eKLR  tackled the complex question of horizontal application of the Constitution to private commercial disputes governed by contracts with private dispute resolution mechanisms. More interestingly, the court had to consider whether the amount of Kshs. 33,930,000/= paid by the Petitioner to acquire a ‘goodwill’ over certain distribution routes or areas of the Respondents’ products can be defined as ‘property’ held by the Petitioner and as such protected under Article 40 of the Constitution.

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Court Upholds Anti-Counterfeit Agency Raid and Seizure: Shikanisha Shoes Collection v Attorney General

simba land counterfeit shoes timberland shikanisha nakuru kenya ACA anti-counterfeit agency raid 2016

How to spot ‘fake’ Timberland shoes 101

Following the high profile raid and seizure of a ‘fake’ shoes shop in Nakuru (see video footage here), the court has delivered a recent judgment in the case of Paul Kihara Nduba t/a Shikanisha Shoes Collection v Attorney General & another [2016] eKLR in which the owner of the Nakuru shoes shop challenged the enforcement actions taken by the Anti-Counterfeit Agency (ACA). The Petitioner sought several declaratory orders from the court to the effect that Section 23 (c) of the Anti-Counterfeit Act No. 13 of 2008 is unconstitutional and inconsistent with Articles 23 (2), 25 (c) and 31 (a) of the Constitution of Kenya and that ACA acted in excess of and in violation of Section 31 (a) and (b) of the Constitution.

In determining this petition, the court addressed the following issues: 1) Whether this petition is competent; 2) Whether the seizure of the Petitioner’s goods by ACA was lawful; and 3) Whether the Petitioner is entitled to the orders sought in the petition.

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