Jurisdiction is Everything: Time to Merge Tribunals for Copyright, Industrial Property, Seed and Plant Varieties

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As readers may know, a government taskforce had earlier recommended the merger of the three intellectual property (IP) offices dealing with copyright, industrial property and anti-counterfeit matters. The implementation of these recommendations appears to have stalled with no progress made to-date. In addition to the IP offices, there is also the matter of the various IP dispute resolution bodies created under the various IP laws: the Industrial  Property  Act establishes the Industrial  Property  Tribunal, the Copyright Act establishes the Competent Authority (akin to a Copyright Tribunal), the Anti-Counterfeit Act  establishes the Anti-Counterfeit Agency and the Seeds and Plant Varieties Act establishes the Seeds and Plant Tribunal.

Recently, the Judiciary Working Committee on Transition and Restructuring of Tribunals developed a Draft Tribunal Bill 2015 to help domicile all tribunals under the Judiciary. This is an important step that could benefit IP owners and users in the quick and expert settlement of various IP-related disputes.

The most compelling reason for a merger of IP tribunals is to address the questions of jurisdiction that often crop up during IP-related disputes.

In the IPT case of George Ragui v Moras Group Limited, Naivas Supermarkets Ltd and Safaricom Ltd, the issue was alleged infringement of the Applicants’ registered industrial design by the Respondents. The Respondents raised a preliminary objection claiming that the IPT lacked jurisdiction to determine the matter because the issue at hand concerned matters in the Copyright Act under which the rights of the Respondent were protected. While ruling that it had jurisdiction to determine the matter, the Tribunal recommended the merger of all the IP-related tribunals thus:

“It may sound too remote but there is need for establishment of one umbrella Intellectual Property Tribunal so that the parties are not left stranded or being shunted from one forum to another unnecessarily as exemplified by the 1st and 2nd Respondents’ conduct, intent and arguments.”

It therefore follows that the establishment of one IP Tribunal would ensure certainty among parties as well as create a one-stop shop for all IP related disputes.

The Sanitam patent cases previously discussed here also illustrate the confusion that arises between the IPT and the courts when determining the question of jurisdiction. In the Rentokil case, the High Court found that the IPT was the proper forum to determine disputes arising from granted patents such as that of Sanitam. In the Chemserve case, Sanitam’s patent was threatened with revocation but the IPT claimed that it did not have jurisdiction to determine revocation proceedings for patents granted by ARIPO; a ruling which was later overturned on appeal by the High Court.

The Safaricom cases (particularly Ondieki and Faulu Kenya) also illustrate some of the challenges faced by claimants seeking to litigate IP matters before the High Court. In both cases, Safaricom unsurprisingly sought to oust the jurisdiction of the courts in favour of the IPT to hear the IP disputes lodged and in the Ondieki case, the mobile operator succeeded despite the original unlimited jurisdiction conferred on the High Court by the Constitution not to mention that Ondieki was not claiming any of the rights under the Industrial Property Act.

As we speak, the status quo challenges with the IP tribunals persist. With regards to copyright, the relevant Tribunal has still not been operationalized and no new Tribunal members have been appointed since the lapse of the appointment term for the current Tribunal members earlier this year. With regards to industrial property, the appointment of a chairman and two members of the IPT was gazetted recently (see here and here). Subsequently, the appointment of two other members of the IPT was gazetted (see here) but later curiously revoked (see here).

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