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

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.

Legal Capacity of Distributor in Trade Mark Action: Ruling in Harleys Ltd v Ripples Pharmaceuticals Ltd & Anor

This blogger has recently come across the reported case of Harleys Limited v Ripples Pharmaceuticlas Limited & another [2015] eKLR. Vitabiotics Limited, a UK-based drug manufacturing company had previously engaged Ripples Pharmaceutical Limited and Metro Pharmaceuticals Limited to import, distribute and sell their products in Kenya. Thereafter, Harleys Limited became Vitabiotics exclusive distributor in Kenya. Harleys then went to court and obtained temporary orders blocking Ripples and Metro from importing, packaging, selling as well as distributing products bearing a trademark similar or confusingly similar in get-up to the trademarks owned by Vitabiotics.

The court’s ruling was focused on two main issues namely; (1) Whether or not the Harleys had legal standing/locus standi to institute the proceedings? and (2) If so, was Harleys entitled to the orders it had sought in its application?

Anti-Counterfeit Agency Under Fire As War On Illicit Brews Continues

Earlier this year, we discussed the successes of Anti-Counterfeit Agency (ACA) in thwarting judicial review proceedings filed against it in two separate cases namely “Omega Dustless Chalk” and “Zero B”. However, some of the allegations leveled against ACA in these cases raised eyebrows over the state of affairs at ACA. A welcomed development for ACA came with the recent appointment of Mr. Polycarp Igathe (pictured above) as the new Chairman of ACA Board of Directors. Igathe, CEO of Vivo Energy and formerly Chairman of Kenya Association of Manufacturers, is highly respected in the private sector and said to be committed to the fight against counterfeits in Kenya. Following Igathe’s appointment, ACA made news headlines when it announced that it had decided to send four of its senior officers on compulsory leave over allegations of gross misconduct.

Singular Use of “TUSKYS” Trademark by Supermarket Chain Not Allowed in Uganda: Judgment in Tuskys (U) Ltd v. Tusker Mattresses (U) Ltd

This blogger has come across a recent judgment from Uganda’s Commercial Court in the case of Tuskys (U) Ltd v. Tusker Mattresses (U) Ltd [2015] UGCOMMC 91. In this case, TUSKYS, a Ugandan Company dealing in arts and crafts, sued Tusker Mattresses, a subsidiary of Tusker Mattresses (K) Ltd over infringement of the trademark “TUSKYS”. Tuskys asked the court for damages, costs and interest from Tusker Mattresses for denying it the exclusive use of its trademark. Tuskys also prayed court for an injunction “stopping Tusker Mattresses from using the trademark” which according to the company’s Managing Director was registered in Class 18 for crafts and arts in 2008.

The following facts were agreed upon by both parties:

1. Tuskys is the registered proprietor of “TUSKYS” trademark in Uganda in respect of goods in class 18 (arts and crafts).

2. Tusker is the registered proprietor of the “Time to Go, Tuskys, Your Friendly Supermarket” trademark in Uganda in respect of goods in class 16 and is involved in the business of running supermarket retail chain under their registered trademark.

3. Tusker duly complied with the orders of Hon. Justice Hellen Obura and accordingly rebranded all its shop and items to reflect their registered trademark.

4. Tuskys avers that Tusker’s use of the word Tuskys mark in conduct of their business is an infringement of their trademark for which its reputation and trade pattern has been greatly injured.

The Newly-Appointed 2015-2018 Kenya Industrial Property Institute Board of Directors

The Cabinet Secretary for Industrialization and Enterprise Development who is the Minister responsible for industrial property rights in Kenya has appointed seven (7) individuals to serve as Board Directors of the Kenya Industrial Property Institute (KIPI). These appointments took effect on the 1st of July 2015 and will run for a period of 3 years.

The announcement of these appointments can be found in the Kenya Gazette (pictured above) Notice No. 4751. The new appointees are as follows:-

ARIPO Adopts Arusha Protocol for the Protection of New Varieties of Plants

The ARIPO Protocol for the Protection of New Varieties of Plants has been adopted by the Diplomatic Conference that was held in Arusha, the United Republic of Tanzania on July 6-7, 2015. Hence the name of the adopted Protocol is: Arusha Protocol for the Protection of New Varieties of Plants. A copy of the Arusha Protocol is available here.

According to ARIPO, the Arusha Protocol seeks to provide Member States with a regional plant variety protection system that recognizes the need to provide growers and farmers with improved varieties of plants in order to ensure sustainable Agricultural production. Eighteen Member States of the Organization were represented at the Diplomatic Conference namely; Botswana, The Gambia, Ghana, Kenya, Liberia, Lesotho, Malawi, Mozambique, Namibia, Rwanda, São Tomé and Príncipe, Sierra Leone, Sudan, Swaziland, United Republic of Tanzania, Uganda Zambia and Zimbabwe.

High Court Suspends New Tobacco Packaging Regulations: Ruling in British American Tobacco Kenya Ltd v. Cabinet Secretary for Health & 2 Ors

Previously, this blogger discussed here the Tobacco Control Regulations 2014 made by the Cabinet Secretary for Health published under Legal Notice No. 169 of 2014 in the Kenya Gazette Supplement 161, Legislative Supplement No. 156 of 2014 and scheduled to take effect on 1st June 2015. In a recent development, the High Court has delivered a ruling in the case of British American Tobacco Kenya Ltd v Cabinet Secretary for the Ministry of Health & 2 others [2015] eKLR ordering that the implementation of these Regulations be temporarily suspended.

British American Tobacco (BAT), the Petitioner, moved the Constitutional and Human Rights Division of the High Court under certificate of urgency for various conservatory orders staying the coming into force and implementation and/or operation of the Tobacco Control Regulations 2014. Among BAT’s list of grounds for seeking the conservatory orders, there was a claim that the implementation of certain requirements in the Regulations would result in an infringement of intellectual property (IP) rights held by BAT.

“PANASUPER” Trademark Fraudulently Registered in Uganda: Judgment in Muse Af Enterprises Co. Ltd v. Billen General Trading Ltd & 2 Ors

This blogger has come across a recent judgment from Uganda’s Commercial Court in Muse Af Enterprises Co. Ltd Vs Billen General Trading Ltd & 2 Ors [2015] UGCOMMC 88. In this case, Muse filed an application for registration of the PANASUPER trademark in Uganda on 3rd August 2006 but the application was opposed by Matsushita Electronic Industrial Co. Ltd of Japan, the registered proprietors of Trademarks No. 25731 and 28536 PANASONIC. Since the registration of the trademark had been opposed, Muse requested a power of attorney from Linyi Huatai. The PANASUPER trademark was subsequently registered after URSB delivered a ruling disposing of the opposition of the trademark.

Later, Muse filed suit against Linyi Huatai and their local agent Billen for trademark infringement. However Linyi Huatai claimed that Muse had fraudulently registered the PANASUPER trademark in its own name. Linyi Huatai asked the court to cancel the registration of PANASUPER and claimed damages from Muse.

Copyright Ownership of Architectural Drawings in Greenpark Dispute: High Court Judgment in Adventis Ltd v. Superior Homes (K) Ltd.

This blogger came across the recent judgment of the High Court in the case of Adventis Limited v Superior Homes (K) Limited & another [2015] eKLR. At the heart of this case is Greenpark, a gated housing development with over 600 units off Nairobi’s Mombasa Road near Athi River. In 2004, Adventis was appointed by Superior Homes as lead Architects for Architectural work and services for Greenpark. Later, UK architectural firm of Young & Gault was roped into the project following the disaffection by Superior Homes with the services which were being rendered by Adventis.

The court established that Young & Gault was brought in as a go-between to supervise the work that was being undertaken by Adventis so that Superior Homes would be sure that it was getting the right worth of its money. Later, Superior Homes refused to pay Adventis for services rendered and the latter sued. Among the claims made by Adventis was that Superior Homes infringed the copyright in the architectural drawings by Adventis by converting it’s drawings and holding them out and publishing them for commercial purposes.

No Similarity between “AIRTAL” and “ZYRTAL MR” Trade Marks: High Court Judgment in Pharmaken Ltd v. Laboratories Almirall S.A

“In the circumstances of this case accordingly, it is difficult to understand how the Registrar of Trade Marks whether under Section 14 or 15 of the Act, arrived at his conclusions. The marks are clearly phonetically and visually different and are not similar or identical. The goods are by colour, shape and size different. The goods are by constitution not identical or similar. The likelihood of the goods being dealt with by the usual public is meagre. The possibility of a confusion arising therefore is also meagre.” – Onyancha, J on 25th day of May, 2015.

This blogger has recently come across the judgment in the case of Pharmaken Limited v Laboratories Almirall S.A [2015] eKLR. A copy of the judgment is available here.
The background of this case is as follows: Pharmaken applied for registration of the trade mark “ZYRTAL MR” in class 5 for human medicine. The application was examined and later approved for advertisement. Almirall filed a notice of opposition to the registration of the mark. Almirall stated that it owns the trade mark number 39575 “AIRTAL” in class 5 which has become well known to the Kenya public. Almirall further alleged that the said application resembles their trade mark “AIRTAL” visually and phonetically and that confusion would arise in the mind of the public.