QOTD: Jurisdiction in Patent Infringement Litigation: Industrial Property Tribunal or High Court?


In today’s Question of the Day (QOTD), a reader asks:

“In cases of infringement, I believe that a patent owner can elect to sue in the High Court, and then the court can either take the case or send it to the Industrial Property Tribunal. The patent owner can also elect to take the case directly to the Tribunal and skip the court altogether. Is this understanding correct?”

The Industrial Tribunal is the “court” of first instance. If a party is not satisfied with the decision of the Tribunal, it can proceed on appeal to the High Court. However in practice, some litigants proceed directly to court and if the opposing side raises an objection, some judges refer the matter back to the Tribunal. In some instances, depending on how the matter is presented by the counsel, some High Court judges decide to hear the matter.

In terms of a choice between High Court or Industrial Property Tribunal, the Industrial Property Act, 2001 clearly states that proceedings should start at the Tribunal. In this regard, consider the following sections of the Act:

105. Subject to sections 21(3)(e), 58, 61(6), 72, 73, 80(1C) and 86, any act specified in section 54 or 92 and performed by a person other than the owner of the patent or of the registered utility model or industrial design without the owner’s authorization, in relation to a product or a process falling within the scope of a validly granted patent or certificate of registration shall constitute an infringement.”

106. On the request of the owner of the patent or the registered utility model or
industrial design, the Tribunal shall grant the following relief—
(a) an injunction to prevent infringement where infringement is imminent or to prohibit the continuation of the infringement, once infringement has started;
(b) damages; or
(c) any other remedy provided for in law.”

112. Where under this Act provision is made for appeals from the decisions of the Managing Director, all such appeals shall be made to the Industrial Property Tribunal…”

113.(1) For the purposes of hearing and determining appeals in accordance with section 112 and of exercising the other powers conferred on it by this Act, there is established an Industrial Property Tribunal which shall consist of the chairman and four members appointed by the Minister.”

In those cases where a judge decides to hear the matter at first instance, this decision is open to review and/or appeal either a misinterpretation of the Industrial Property Act or a decision made per incuriam depending on how the matter is presented to the court. In a High Court case reported here, the defendant raised a preliminary objection citing section 112 but not 113. However, in this case, the judge ruled in favour of the plaintiff and allowed the objection without considering section 113 of the Act as reproduced above. It appears that the courts tend to view such objections as encroaching on the unlimited jurisdiction of the High Court.

However, the intention of the legislature seems to be that the Industrial Property Tribunal would act as a specialised court that would take advantage of its expertise and experience to deliver speedy and sound rulings. The Tribunal has a full time Secretary employed by the KIPI as legal officer to carry out legal research and provide reports to assist the members of the Tribunal.

In the context of trade mark litigation, the Industrial Property Tribunal would be akin to the Registrar of Trade Marks who hears and determines opposition/expungement matters. In this regard, it is important to note that most of the trade marks rulings delivered by the Registrar are seldom challenged on appeal in the High Court. Even where trade mark matters are appealed to the High Court, very few of these matters are set aside by the court.

High Court Stops Zuku, PANG and StarTimes from Infringing KBC World Cup 2014 Exclusive Media Rights

Media reports (here, here, here and here) indicate that the Kenya Broadcasting Corporation (KBC) has moved to the High Court under Certificate of Urgency seeking interim injunctive orders against Pay TV companies Wananchi Group, Pan African Network Group (PANG) and StarTimes Media. It is reported that Ogola J sitting in the High Court made the following ruling:

“Pending the hearing and determination of this suit, an injunction is issued restraining the respondents (Wananchi, PANG and StarTimes) from infringing by way of advertising, broadcasting or promoting the tournament the rights of KBC”

From the outset, it is important to state that the rights in question are FIFA Media Rights conferred exclusively to KBC for the territory of Kenya (See our previous analysis here). In this regard, KBC alleges that its exclusive rights were infringed through hacking of its signals and broadcasting of the World Cup opening match along with the adverts paid for to be aired during the match. In this regard, KBC claimed that these companies used the popularity of the World Cup to attract advertisers and make sales of their decoders.
In the case of StarTimes, it is alleged that even after KBC blocked StarTimes from its digital platform, StarTimes used the analogue signal to re-broadcast live matches of KBC to its Kenyan viewers and those in Uganda and Tanzania.

Read the full article here.