In Kenya’s cut-throat hair business, three competitors (the purveyors of hair extensions branded ‘Darling’, ‘Angels Hair’ and ‘Sistar’ respectively) have distinguished themselves through aggressive marketing and strategic litigation over their brands. In a previous blogpost here, we highlighted an interesting High Court case where the Sistar hair maker filed a trade mark infringement suit against both its rivals, Style Industries (of the ‘Darling’ fame) and Sana Industries, known for ‘Angels Hair’.
In this latest installment, we focus on the recently reported High Court ruling in Style Industries Limited v Sana Industries Co. Limited  eKLR in which the Plaintiff (Style) was partially successful in its application for both injunctive relief and Anton Piller orders against the Defendant (Sana) for infringement of its ‘VIP COLLECTION’ trade mark.
As readers may know, Competition Authority of Kenya unconditionally approved Style’s acquisition of a majority stake in a company called Strategic Industries Limited in 2012. This company was the proprietor of trade mark number 065629 VIP COLLECTION, a word mark registered in 2009 and pictured below as extracted from the Industrial Property Journal published by Kenya Industrial Property Institute. Style’s acquisition in 2012 included a Asset Purchase Agreement pursuant to which Style effectively became the owner of the VIP COLLECTION trade mark.
Style claims that sometime in October 2017, it noticed that its sales turnover for products with the above trade mark had plummeted considerably. This drop in sales was later attributed by Style’s marketers to the emergence of similar products inscribed with the words “VIP PREMIUM COLLECTION” that were being manufactured and sold by the Defendant alongside Style’s products. According to Style, Sana’s products have similar or deceptively similar features as their products as to amount to infringement of its exclusive right to use its “VIP COLLECTION” Trademark and that Sana would continue using the infringing name, marks, labels and get-up unless restrained by the Court. Additionally, Style also asked the court for Anton Piller order which would effectively allow Style to ‘access Sana’s premises to take inventory of all such products bearing the name “VIP COLLECTION” and take away such samples as may be necessary until the hearing and determination of this suit.’
On its part, Sana claimed that it has used the words “VIP PREMIUM COLLECTION” in the course of trade since 2008 for purposes of quality and not for brand identification, a fact which it alleges is equally applicable to Style’s use of “VIP COLLECTION”. In addition, Sana argued that the assertion by Style that its sales turnover had dropped as a result of Sana’s use of “VIP PREMIUM COLLECTION” was a false representation of the market, which had stagnated during the periods highlighted by Style as a result of the prolonged general elections experienced in the country. In response to the claim of infringement, Sana contended that the get up, logo and colour scheme of their product were entirely different from that of Style. According to Sana, Style’s trade mark is for use of “VIP COLLECTION” in that sequence and order while the Defendant’s sequence is “VIP PREMIUM COLLECTION”, a manifest difference to any user.
On the prayer for a temporary injunction, the court held that Style had satisfied all three factors. Firstly, the court found that Style had established a prima facie case by demonstrating that it had registered its trade mark whereas Sana was not the registered proprietor of the trade name complained of in the suit. As such, Style was entitled to the protection of its rights as provided under the Trade Marks Act. In a similar vein, the court found that the plaintiff’s statutory rights had crystallised and that there was ‘no standard by which the Plaintiff’s apprehended loss would be measured with reasonable accuracy, for the injury complained of is of such a nature that monetary compensation, of whatever amount, would never be adequate remedy.’ In other words, the court found in favour of Style with regard to the second factor, that it stands to suffer irreparable harm from Sana’s conduct that could not be compensated through an award of damages. The third and final factor on the balance of convenience was decided in favour of Style ‘being the registered user of the words VIP COLLECTION.’
Despite the above findings, the court was not prepared to grant Style its prayer for Anton Piller orders. In denying Style’s Anton Piller order application, the learned judge stated as follows:
‘ Whereas the Plaintiff has shown that it has a prima facie case against the Defendant, I did not hear it say that there is some evidence in the possession of the Defendant which is at risk of being destroyed. To the contrary, the Plaintiff was able to access the evidence of the alleged infringement and annexed the same to its Supporting Affidavit as Annexure GK 6. In the same vein, the Defendant also attached copies of the logos used by it in connection with their products that bear the names “VIP PREMIUM COLLECTION”. There is therefore no danger that that evidence may be destroyed before the hearing of this suit. Indeed, at paragraph 6 of the Plaintiff’s Supplementary Affidavit, it was averred that “…the Plaintiff will have no problem at all if the Defendant stopped the use of the words “VIP COLLECTION” on its products.” This was an acknowledgement that the Plaintiff and the Defendant are in competition with each other. Thus, an Anton Piller Order at this stage of the proceedings would be pointless.’
This sagacious finding by the court was clearly premised on the commercial realities at play. It also appears that the court may have indirectly prevented Style from obtaining an undue advantage over its main rival by having accessing to the latter’s premises to carry out a fishing expedition in the name of preservation of evidence.
We will be keeping tabs on this case as it is heard and determined by the High Court.