High Court Dismisses Judicial Review Application in “ZERO B” Trade Mark Dispute


This blogger has come across a recent judgment by the High Court in the case of Republic v Anti-Counterfeit Agency & 2 others Ex parte Surgippharm Limited [2015] eKLR. A copy of the judgment is available here. In this case previously highlighted here, Surgipharm Limited went to the High Court seeking judicial review orders to prohibit the Anti-Counterfeit Agency (ACA) from carrying out its enforcement mandates under the Anti-Counterfeit Act. Following a complaint against by Wiskam against Surgippharm, the Chief Magistrate’s Court, Nairobi granted ACA a warrant of entry, search and seizure was issued against Surgippharm with regard to the alleged counterfeiting activity.

While Surgippharm admits that Wiskam is the registered holder of the “ZERO -B” trademark in Kenya, Wiskam failed to disclose to ACA and the Magistrates’ Courts that Surgippharm had initiated proceedings for the expungement of the mark with the Registrar of Trade Marks at Kenya Industrial Property Institute (KIPI). Surgippharm also alleges that Wiskam also failed to disclose that had already commenced proceedings in the high court of Kenya seeking, inter alia, for an injunction order and an award of damages against Surgippharm, being HCCC NO. 542 of 2011.

Therefore Surgippharm’s central contention is that it is the agent of the inventor and innovator of the ZERO B range of products globally M/S ION EXCHANGE (INDIA) LTD. Hence, the dispute is as to who the true and legitimate owner of the ZERO B trade mark which can only be determined under the infringement proceedings already lodged at the High Court, Nairobi or the expungement proceedings pending at KIPI and not through the criminal process pending in the Magistrates’ Courts. In this connection, Surgippharm contends that it is an abuse of court process for court proceedings to be initiated in 3 different courts since there is the attendant risk of contradictory/orders being granted by the respective courts.

In dismissing Surgippharm’s application, the court stated as follows:

“It is therefore clear that any wrongful seizure of the goods is to be dealt with under section 25 of the Act. A Court of competent jurisdiction in my view would be a court competent to consider the merits of the decision taken. Judicial review court on the other hand is not the court empowered to deal with merits hence in my view is not the court contemplated under section 25(3) of the Act. It follows that a Court in judicial review proceedings would not be entitled to quash a decision made by a Tribunal merely on such grounds as the decision being against the weight of evidence; that the Tribunal in arriving at its decision misconstrued the law; that the Tribunal believed one set of evidence as against another and that the Tribunal has ignored the evidence favourable to the applicant while believing the evidence not favourable to him.

It is therefore clear that there is an express legal remedy provided for challenging a decision made pursuant to the provisions of the Anti-counterfeit Act. It trite, however where that there is an alternative remedy which is more convenient and appropriate for the resolution of the issues in contention in judicial review proceedings, the Court ought to exercise restraint.

The Court is cognisant of the fact, which fact is appreciated by the parties hereto that the substantive dispute herein revolves around the determination of the proprietorship of the trade marks in dispute. Unless that issue is resolved any orders granted by this Court will only resolve the “symptoms” while leaving the “ailment” in place.”

Some may recall the intervening ruling by the Registrar of Trade Marks on the preliminary objection by Wiskam against the expungement proceedings by Surgippharm. The Registrar found that Surgippharm had the legal capacity to commmence expungement proceedings but it ruled that the Registrar did not have the powers to entertain the proceedings. In making this determination, the Registrar ruled that it has no mandate to hear and determine the expungement proceedings because of the pending High Court Civil Suit No. 542 of 2011 (Wiskam Agencies Holdings Limited v. Surgippharm Limited) and that entertaining the proceedings would be contrary to the provisions of sections 35 and 53 of the Trade Marks Act.

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