“As a principle of law, the fact of registration of trade mark per se does not entitle the proprietor of trade mark to an automatic injunction to restrain use of the trade mark by a person who has continuously used the trade mark prior to, during and after the registration of trade mark. In other words, in the face of a claim of prior user of trade mark, and absent other strong and cogent evidence, the fact of registration of trade mark does not invariably constitute a prima facie case with a probability of success in the sense of the case of Giella vs. Cassman Brown.” – Gikonyo J at para 29 in Solpia Kenya Limited v Style Industries Limited & another  eKLR.
This blogger has come across an interesting ruling recently made by the High Court in the case of Solpia Kenya Limited v Style Industries Limited & another  eKLR concerning alleged infringement of trademark and passing off goods by Style Industries and Sana Industries in relation of which the trademark “GALAXY” which was registered by Solpia Kenya Limited. The matter before the court was an application by Solpia Kenya seeking injunctive orders to restrain Style and Sana from “offering for sale, stocking, distributing, displaying, producing, manufacturing, packaging, advertising, marketing and/or selling braids, wigs, weaves and artificial hair pieces bearing the Applicant’s trade mark “GALAXY” or in any way infringing and/or passing off the Applicant’s trade mark “GALAXY” pending the hearing and determination of this application or further orders of the Court”.
To illustrate its infringement and passing off claims, Solpia Kenya presented the following tabular representation:
While it is not disputed that Solpia Kenya is the proprietor of the Trade Mark “GALAXY” Trade Mark No.75929 registered in Class 26, Style and Sana claimed that they and their predecessors have been using the trade mark GALAXY; been manufacturing, advertising and selling cosmetics products including wigs, weaves, hair additions and hair extensions since 2007, which is way before Solpia Kenya registered the trademark and entered the beauty field of business.
The High Court in making its ruling dismissed Solpia’s application stating as follows:
“In the circumstances of this case, and the fact that evidence of use anterior has been presented, the test of balance of convenience is most apt; the balance of convinience tilts in favour of refusing the injunction and asking parties to prosecute their respective cases in the trial without delay.”
In arriving at its finding, the learned judge emphasised that the right under section 7 of the Trade Marks Act is not absolute; it is subject to exceptions in particular section 10 of the Act which provides that registration of trade mark does not entitle the proprietor of the trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date anterior.
A copy of the full ruling is available here.