Power of Trade Marks Registrar to Permit Further Evidence Under Rule 52: Case of Strategic Industries v Rebecca Fashion (Kenya) Ltd

Rebecca Fashion Freedom Flower Photo by Kilimall 522_05224374934808516_1280 Fashion Idol Style Icon Hair Wig

“An act, it is my view, is not ultra vires if it is found to be within the main purpose, or within the special powers expressly given by the statute to effectuate the main purpose, or if it is neither within the main purpose nor the special powers expressly given by the statute, but incidental to or consequential upon the main purpose and the act is reasonably done for effectuating mandate.” – Justice GV Odunga at paragragh 27.

In a recent High Court ruling in the case of Republic v Assistant Registrar of Trade Marks Ex Parte Strategic Industries Limited & another [2016] eKLR, the court had to determine whether the Registrar of Trade Marks has the power under rule 52 of the Trade Marks Rules to permit further evidence to be adduced after the statutory declaration has been filed under rule 51 of the said Rules.

In May 2011, an advertisement was made in the Industrial Property Journal indicating that Rebecca Fashion (K) Limited, the Interested Party in the present case, had made Trade Mark Application Number 70124 in class 26 to Kenya Industrial Property Institute (KIPI) that was seeking to register the mark FREEDOM as its trademark. In July 2011, Strategic Industries, the Applicant in the present case, filed with KIPI a Notice of Opposition opposing the application by the Interested Party to register Trade Mark No. 70124 ‘FREEDOM’ in class 26 and urged that the said application should not be accepted.

The crux of the applicant’s claim was that leave to adduce further evidence under rule 52 can only be granted before the matter is heard since rule 54 shuts out further action save for the hearing. It was therefore submitted that in this case, the Respondent had no jurisdiction to grant leave to a party to adduce further evidence after hearing the parties.

The interested party’s position was that whereas the applicant faults the Registrar of Trademarks for exceeding jurisdiction and the powers granted upon the Registrar by rule 52 of the Trade Marks Rules 2003, the Registrar acted within her powers and jurisdiction and considered all relevant factors and materials relating to the matter before her and this explains why the applicant does not point an impropriety on the part of the registrar of trademarks or fault her for considering irrelevant facts.

It was the interested party’s contention that the law allows the hearing before the Registrarto be either through affidavit evidence or through viva voce evidence even when parties have filed statutory declarations in which instance, a party could still adduce further evidence orally and still be considered. It was reiterated that the applicant will suffer no prejudice in permitting adducing of further evidence since, as it is, it has no right guaranteed to face a weak opponent’s case, and the applicant further do not enjoy any freedom from facing a strong case by the opponent. It was therefore contended that the instant application does not meet the threshold for grant of the judicial review prayers as sought. To it, in hearing and determining any applications placed before the Registrar of trademarks, under Rule 52 of the Trademark Rules, the Registrar is required to inter alia exercise her discretion.

In its ruling, the High Court agreed with the interested party and stated as follows:

“In my view rule 52 aforesaid deals with the power of the Registrar to allow parties to lead further evidence “at any time”. In my view the said provision should be construed to read that:

‘No further evidence shall be led on either side, but, in any proceedings before the Registrar, he may at any time give leave to either the applicant or the opponent to lead any evidence upon such terms as to costs or otherwise as he may think fit.’

It therefore follows that the Registrar has the power at any time to lead further evidence. Whether or not she was justified in so doing is a matter which goes to the merit of her decision and such decision can only be challenged by way of an appeal as opposed to judicial review.”

As a result, the court’s view was that whether or not the Registrar exercised her discretion properly, which discretion, the court found she had, is a matter for the High Court to consider on appeal from the Registrar’s decision.

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