In what could be a precedent-setting case for the roofing products market, a leading iron sheet manufacturer is claiming both trade mark and industrial design protection for two of its roofing brands against a smaller rival company. The recently reported ruling in Royal Mabati Factory Limited v Imarisha Mabati Limited  eKLR was the courts’ first attempt to deal with industrial property protection for corrugated iron sheets widely used as roofing material known in Kiswahili as ‘mabati’. Although not clearly distinguishing between the aspects of industrial design and trade mark protection, the court was prepared to rule in favour of Royal and grant its application for a temporary injunction against Imarisha.
Royal’s major complaint was that Imarisha have infringed its rights to the iron sheets by advertising and embodying similar features identical to its own. Royal contends that, by Imarisha offering for sale iron sheets and tiles which are a direct replica of its products, the protected design and trade mark rights have been infringed. According to Royal, if Imarisha continues with the infringement it could be confusing to the customers with a product purely conceptualized by Royal. As a result, Royal sought an injunction for the court to protect its rights and interest pending the hearing and determination of the suit.
Royal argued that it is the proprietor of various industrial designs (registration numbers 917, 921, 920, 922 and 919) which apply to its colour-coated iron sheet products. In addition, Royal is also the proprietor of a number of trade marks with respect to its products including “Royal Box Profile” and “Royal Classic Tile” registered under trademark numbers 89074 and 97336 respectively. A sample of the industrial design and trade mark registrations obtained by Royal is pictured below as extracted from the Industrial Property Journal published by Kenya Industrial Property Institute.
It appears that the background and summary of the case by the parties is not comprehensively summarised by the court in its ruling. This is clear from the lack of any specifics regarding the nature and scope of the trade mark and design infringement Imarisha. Meanwhile, a cursory look at Imarisha’s official website here seems to support its argument in the ruling that: ‘the company has been in operation manufacturing iron sheets of different shapes and colours [and] (…) that there is nothing unique about iron sheets produced in Kenya as alluded to by [Royal] to warrant the complaints raised in the Plaint and their accompanying affidavits.’
The court’s analysis and resolution is skewed in favour of Royal however there is little or no reference to any facts or evidence to support this position other than its trade mark and industrial design registrations. In this regard, the court ruling reads, in part, as follows:
‘In essence the plaintiff is alleging that he has a legal right protected and governed by the statutory products being the trademarks Act 506 and the Industrial Property Act No. 3 of 2001. The existence of this legal right is a matter that cannot be resolved through the contested affidavit evidence which has not been tested through cross-examination to resolve any variances. The existence of the rights and its infringement by the defendant are matters certainly to be dealt with at a final judgement of this court. At this interlocutory stage the court’s in exercise of discretion has to weigh the competing interests and the rights for both parties. In considering the affidavit by the plaintiff, the plaint filed and subsequent rejoinder by the defendant together with annexures it is clear that as at 8th May 2011 there exist a legal right that is worthy of protection by the court.’
All in all, the court ruled in favour of Royal solely on the basis that it had established that it is the registered proprietor of the trade marks and industrial designs in question and as such ‘a breach involves a recognized legal right in a statute Royal may suffer irreparable harm which will not be compensated by an award of damages if an order of injunction is withheld.’ Further the court found that ‘it appears just and convenient that an interlocutory injunction does issue to prevent prejudice or further threat to infringement until the final determination of the main dispute.’
As always, we will be keeping tabs on this case as it is heard and determined by the High Court.