High Court Allows Parallel Importation of Durex Trade Mark Products in Kenya

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In a recently reported ruling in the case of LRC Products Limited v Metro Pharmaceuticals Limited [2016] eKLR, the High Court dismissed an application by the plaintiff for an injunction restraining the defendant from importing, packaging, supplying, selling or offering for sell, distributing or otherwise dealing with the ‘Durex” products. The plaintiff had also sought orders to enter into the Defendant’s premises and seize all products or packaged products bearing the Plaintiff’s trademark, or similar trademark and further, seize records of purchases and sales, invoices and any other documents which constitute or would constitute evidence necessary to substantiate its cause of action.

As a result of this ruling, a trade mark will not be infringed by the importation into or distribution, sale or offering for sale, in Kenya of goods to which the trade mark has been applied by or with the consent of the proprietor.

It is undisputed that the Plaintiff is the registered proprietor of the trademark “Durex” which is registered in Kenya under the provision of the Trademark Act, Class 3 and designated trademark No KE/T/1987/0036294, with the effective date of registration being 9th February 2012 to 9th February 2022.

In considering the plaintiff’s application, the court set out two issues for determination:  (1) is whether there was infringement and (2) whether the Plaintiff has established a prima facie case with probability of success.
With regard to the first issue, the court states that the Defendant has contended that it is neither a manufacturer nor a proprietor of the trademark “Durex”. However, it claims an importer of the “Durex” products belonging to the Plaintiff, and that it has never refuted or disputed the Plaintiff’s ownership of the products. The Defendant adduced evidence to show that it had paid both custom and excise duty, and complied with importation regulations. In this regard, the Defendant contended that as a mere importer not being in direct or indirect competition with the Plaintiff, it could not have possibly have infringed upon any rights that the Plaintiff enjoys over the trademark “Durex”.

The crux of the defendant’s case was the contention that there is no legal or legislative bar to the importation and distribution of the “Durex” products, and that in essence, they are licensed to import parallel to the Plaintiff, from any of its other distributors. In this regard, the Defendant relied on the case of Lord Healthcare Ltd v Salama Pharmaceuticals Ltd [2008] eKLR where Okwengu, J held inter alia;

Neither the Plaintiff nor the Defendant is a manufacturer of the product “Budecort-200 Budesonide Inhaler”. The product sold by the Plaintiff is manufactured by Cipla Ltd India who has given the Plaintiff exclusive rights of distributorship of the product in Kenya. The Defendant is selling the same product manufactured by Cipla Ltd India under license from the International Registered Owner Fujisawa Deutschland GmhH who has international protection under the Paris Convention. The Defendant contends that the “Budecort” products are supplied by Cipla Ltd in more than one country and parallel importation allows for importation of the same product from such other markets. All these are contentious issues which can only be determined at the trial after the Court has had the benefit of hearing full evidence.”

In finding in favour of the Defendant, the court in the present case stated as follows:

“The circumstances as pronounced in Lord Healthcare Ltd v Salama Pharmaceuticals Ltd (supra) are similar to those in the instant matter, save that here the Defendant only claims to be an importer of the “Durex” products from third parties  who may have had a distributorship agreement with the Plaintiff’s parent company.  (…) Further, it has not been established, at this particular juncture how the Defendant, who asserts that it is an importer of the Plaintiff’s products, has infringed on any of the Plaintiff’s right for exclusive use of the trademark “Durex”.  (…) In this instant, and from the facts on record, there is no establishment of a prima facie case by the Plaintiff to warrant the Court to issue an order of injunction against the Defendant. The contentious issues raised herein are the preserve of the trial Court, and therefore I would at this particular juncture, not issue orders as prayed for in the application.”

Given the court’s reliance on an earlier ruling in the case of Solpia Kenya Limited v Style Industries Limited & Another (2015) eKLR discussed previously here, it appears that the courts are somewhat reluctant to grant interim orders particularly injunctions to plaintiffs even where the latter are the duly registered proprietors of trade marks.

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