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Title: General Plastics Limited v SafePak Limited
Venue: Industrial Property Tribunal at Nairobi
Case ID: IPT No. 36 of 2002
Tribunal Panelists: Moses Kurgat, Maria M. Mutua,  Job Weloba, Dr. Mtana Lewa, Eng. David                                   
Date of Decision: 28th February, 2011
Applicant(s): General Plastics Ltd
Respondent(s): Safepak Limited
Keywords: Industrial design, prior art, evidence

Facts:
The Requestor found additional evidence that the industrial designs in dispute had been registered in other countries around the world. The Requestor therefore sought to adduce this new evidence on the grounds that the evidence would demonstrate that the industrial designs in dispute had been anticipated by prior art. This evidence according to the requestor would influence the outcome of the case.
The Respondent opposed this move and argued that there had been inordinate delay in bring the evidence and that the matter was res judicata. It would be an abuse of the Court process if fresh evidence was admitted since the application has been filed nine and a half years after revocation proceedings were filed.

Issues:
Should the Tribunal grant leave to the requestor to adduce fresh evidence in the current case and also in IPT Case Nos.l7, 18, 23, 24 & 37 of 2002?
Holding:
The Tribunal held that there was no res judicata issue arising in the case. The Tribunal allowed further evidence to be admitted and stated that the decision is in furtherance of the doctrine of natural justice. The Tribunal affirmed its position that it would not be bound by technicalities such as to deny a party his day in Court

Cases Cited
1.    Board of Education -Vs- Rice and others(1911) AC179
2.    Russei-Vs- Duke of Norfolk 0949} (ALLER 109)
3.    Mobil Oil Australia -Vs- FCT, 1963 lib 113 CLR 475
4.    Equity Bank Limited -VsCapita/ Construction Limited (2012) eKLR
5.    Speaker of National Assembly -Vs- Njenga Karume 0990- 19947 E.A 546
6.    Pancras T. Sorai -Vs- Kenya Breweries Ltd (2006) eKLR
7.    Mburu Kinvua -Vs- Gachini Tuti 0978) (KLR 69
8.    "Yat Tung Investments Co. Limited -VS- Dao Heng Bank Limited, 1975 AC 578

RULING
The parties put up robust arguments in respect to a Notice of Motion Application dated 2nd of September, 2011 premised under section 103(8) and section 114(1) of the Industrial Property Act No.3 of 2001 and Rule 24(8) of the Industrial Property Tribunal Rules, 2002 by General Plastics Limited, who for purposes of this Ruling shall be referred to as the Requestor.

The said requestor had prayed for orders:-
(1)    “THAT this Honourable Tribunal do grant leave to the requestor to file additional evidence in IPT Case Nos.16, 17, 23 24 & 37 of 2002;

(2)    THAT this Honourable Tribunal do direct that Mr. John Maina, Patent Examiner, KIPI appears before the Tribunal in the matter and also in IPT Case Nos.17, 18, 23, 24 & 37 of 2002 for purposes of giving evidence;

(3)    THAT this Honourable Tribunal do grant leave to the Requestor to file additional evidence in this matter and also IPT Case Nos.17, 18, 23, 24 & 37 of 2002 in terms of the Ruling delivered by this Honourable Tribunal on 28th of February, 2011 in IPT Case No.36 of 2002 (General Plastics Ltd –Vs- Safepak Ltd);

(4)    THAT the costs of this application be in the cause.”

The Requestor filed grounds in support of the application aforesaid as required by law in which some are captured herein, thus:-

(a)    “The requestor has obtained evidence confirming the existence, publication and/or use of registered industrial designs in Hongkong, Thailand, India and other parts of the world that are similar to industrial design Nos.190, 191, 192, 178 and 177 prior to the filing dates for the applications for registration of Industrial Designs;

(b)    The evidence does not form part of the record of the evidence in support of the Requestor’s case in this matter and also IPT Case Nos.17, 18, 23, 24 and 37 of 2002;

(c)    The Requestor could not have filed or produced the additional evidence with the Tribunal at the time of filing pleadings because the same was not in its possession;

(d)    The evidence sought to be introduced will have the effect of succinctly demonstrating to the Tribunal that prior industrial designs were in use and or that had been published in several parts of the world before the filing dates for application for registration of industrial designs Nos.190, 191, 192, 178 and 177;

(e)    The evidence sought to be adduced could not have been obtained earlier even with the exercise of due and/or reasonable diligence;

(f)    The impact of the evidence will be to demonstrate and prove prior art;
(g)    The evidence sought to be adduced will definitely and unequivocally have a critical influence on the outcome of the revocation proceedings;

(h)    The Ruling delivered by this Honourable Tribunal in IPT Case No.36 of 2002: General Plastics Limited –Vs- Safepak Limited on the 28th of February, 2011 was with respect to similar issues in the application herein;

(i)    It would be in the interest of justice to allow the requestor to adduce the additional evidence;

(j)    The prayers sought will enable this Honourable Tribunal to make a just determination of the revocation proceedings.

The Requestor argues that the evidence they seek to introduce are a letter from Kenya Industrial Property Institute (KIPI) dated 26th July, 2005 and an affidavit by one Schon Ahmed Morain dated 21st of September, 2005.  According to the Requestor this evidence was not a subject of the Ruling delivered by Industrial Property Tribunal on the 15th of July, 2005.  It is new and hence all the grounds set out by the Respondent cannot apply to this new evidence at all.  Such arguments by the Respondent should be disregarded given the circumstances.

The Requestor filed a supporting affidavit by one Rashik P. Shah and on top of that put in written submissions through its lawyers.  The latter also put in supplementary submissions dated 1st October, 2012.  All the afore-stated captures the Requestor’s case in essence.

On the other hand, Safepak Limited, who for purposes of this Ruling shall be referred to as the Respondent put up spirited arguments and grounds in opposition to the Requestor’s application.  The Respondent filed a Statutory Declaration in Reply dated 24th of October, 2011 and very well considered written submissions dated 17th of September, 2012.

The Respondent has argued that there is inordinate delay in filing the present application.  That the application in issue has been filed nine and half years after the revocation proceedings filed on the 7th March, 2002.  The Respondent also have argued very strongly that there has been no exercise of due diligence in obtaining additional evidence.  The Respondent has placed a lot of weight to Resjudicata arguments in an attempt to defeat the Requestor’s application.  The Respondent further has sought to distinguish the present application and the findings in IPT Case No.36/2002 in that there is no similarity and that the request to call the evidence of a patent examiner is in violation of Rule 24(9) of the Industrial Property Rules, 2002 and that all the attempts by the Requestor to file additional evidence is an abuse of the court process. 

The Respondent also referred us to paragraph 7 of the Statutory Declaration of one Tushar Shah, the Respondent’s agent in which the issue of Resjudicata is raised and emphasized.  It is stated very strongly that the Requestor’s application is incompetent, frivolous, lacks merit and that the Requestor is re-litigating on the same issues in which the Industrial Property Tribunal tried and dismissed on the 15th of July, 2005 on the subject  designs and also the High Court tried and determined in Misc. Application No.348/2006 on the 30th of April, 2009 and equally dismissed it and that the present application constitutes not only a ‘backdoor’ appeal but is also a waste of the scant judicial time and resources.

The Respondent have further argued, as set out in paragraph 10 of Tushar Shah’s Statutory Declaration, that this Tribunal lacks the power to exercise its discretion to grant the prayers as sought by the Requestor in that it is “a fundamental doctrine of all courts that there must be an end to litigation  ......................” and further that “it is against public policy if courts of law are to disregard the rule on Resjudicata, thus allowing litigants to bring the same proceedings involving the same issues and the same parties which have already been adjudicated upon, and subsequently reach judgment(s) that are not consistent with the judgments issued earlier by the same/or different court(s) on the same issues and between the same parties” and lastly that “the Industrial Property Tribunal is bound by the principles on Resjudicata and has no discretion or power to disregard it in determining the present application”.

The Respondent also dealt at length with the issue of inordinate delay in bringing the application and that a period of 6 years after Industrial Property Tribunal dismissed identical applications by its ruling dated 15th of July, 2005 on the subject designs and 2 years after the High Court dismissed the applicant’s application on 30th April, 2009 in Misc. Application No.348 of 2006.  The Respondent finally closed its arguments by stating that the issue of Resjudicata aims at curing matters of substance and not technicality.  The thrust of the application according to the Respondent is for leave to enable additional evidence in the matters in question when it is not deserving.

This Tribunal agrees with the holding in the case of Board of Education –Vs- Rice and others (1911) AC179, where it was held that a party to a controversy must be allowed to put their case and to correct or contradict any relevant prejudicial statement.  The need to act in good faith and listen to both sides in a case is paramount and which position this Industrial Property Tribunal agrees and embraces wholly.  The request for additional evidence is not tantamount to making a case for one party as against the other.  In this application, the Tribunal is being asked not to rely on additional evidence but only a grant of leave to adduce such evidence.
This Tribunal aims to do substantial justice.  It does not encourage clerical jurisprudence where technical points of law are raised to defeat opportunities by parties to present their cases wholly.  It does not mean that when such opportunity is granted, it amounts to deciding the case in a particular manner before hand and or without due process.
There is no need to fear such action may occur as the new constitutional dispensation has opened new frontiers for progressive jurisprudence to come in to play in litigation as more particularly enshrined in Article 159(2) (d) of the Constitution of Kenya, 2010.
This country has obligations under international law as exemplified by Article 2(5) of the Constitution of Kenya, 2010.  The applications of international conventions to the Kenya situation cannot be gainsaid as shown by the application of Trips Agreement, amongst a myriad of other intellectual property related treaties that carry international dimensions and informs our policies and legal processes. 

The matters in dispute here are touching on intellectual property where practice for all intents and purposes is hinged on best international practices which are applicable in Kenya by virtue of Article 2(5) of the Constitution of Kenya, 2010.  In order to bring forth the benefits of international statutes and treaties applicable, we must as an Industrial Property Tribunal be mindful of such major and substantive obligations.  There is need to have an intellectual property record and register that is beyond reproach.  The world of intellectual property guards against mischief by ensuring that no duplicity is encouraged.  This brings into focus the provisions of s.86 (2) of the Industrial Property Act, 2001 in which there is need for a considered interpretation so that its true meaning and import can be brought out.  This shall be best left for the appropriate moment.

We adopt the entire ruling of 21st of November, 2011 in this proceeding and cause in respect to the issues of Resjudicata and disregard any re-litigation arguments and proceed accordingly to cast such arguments aside and would not attach any importance or any worthwhile attention.

There is no evidence that the issue of additional evidence had been heard and determined in respect to the distinct and separate industrial designs, the subject matter of the application herein.  We did state in our Ruling of 21st of November, 2011 that “A good case is always one where the parties are given the opportunity to being heard and not driven away from the court unless it is extremely necessary to do so on the facts which are very clear.  The Tribunal shall not engage in any short runs in handling matters”.  This is in all fours with the circumstances obtaining in the present application under consideration and we can only emphasise such a position applies and ought to be maintained and reiterated.

The issue of additional evidence in our understanding is to allow all parties to have reasonable opportunity to present their cases notwithstanding the probative value of such evidence.  The efficacy or otherwise of such evidence shall be a subject of a different decision once it has been placed on record.  It is good to hear such evidence before making a decision as opposed to closing it out.  The rules of natural justice must be applied always and it cuts both ways and or sides.

In the case of Russel –Vs- Duke of Norfolk (1949) (ALLER 109 Tucker J at Page 118 opined that “The requirements of natural justice must depend on the circumstances of the case, the rules under which the Tribunal is acting, the subject matter that is being dealt with and so forth.  One essential is that the person concerned should have a reasonable opportunity of presenting his case ....................”  This case is no different, let the Requestor and the Respondent have equal reasonable and fair opportunity of arguing their respective positions unhindered.

The issues or the subject matters at hand are industrial property matters in terms of design.  The nature of registration and consequences of such registration is that one acquires property as set out in Article 40(5) of the Constitution of Kenya, 2010.  How it is acquired is also a matter of consideration as shown by the provisions of the Constitution of Kenya, 2010 as more particularly set out in Article 40(6).  The ownership of such property is intended to be challenged by the Requestor and such challenge as provided by the Constitution aforesaid requires serious consideration which ought not to be wished away by such technical arguments as fronted by the Respondent herein.

The doctrine of Resjudicata, alleged delay in prosecuting the application or initiating action and abuse of court process arguments cannot be floated in an attempt to defeat a possible challenge under Article 40(6) of the Constitution, 2010 which is the Supreme Law and also a look at S.86 of the Industrial Property Act, 2001 is important.

The registration of the concerned industrial designs however obtained should be a matter, proper so to say, to be dealt with in total disregard of the technical arguments.  There is need for substantive justice to be done.  How it will end is totally immaterial.  The importance of embracing international standards in effectuation of intellectual property disputes cannot be gainsaid. 

There are new frontiers that have been brought about by the Constitution of Kenya, 2010 in which intellectual property is recognised as a right like any other property in law is known.  These new developments were absent in 2005 and 2006 when the Industrial Property Tribunal as then constituted and the Superior Court in 2009 made their respective decisions which are heavily relied upon by the Respondent in an attempt to shut out the additional evidence sought.

The circumstances have changed, so much so, after the 27th of August, 2010 when the Constitution of Kenya, 2010 was promulgated.  With the said promulgation, the law as pronounced in the articles of the Constitution of Kenya, 2010 have ushered a new era that it is only fair to depart from any decisions rendered before distinguishing them as the courts and Tribunals have to move with the times and the changes it carries along.  Such distinguishing or departing from such decisions must be based on circumstances of each situation.

The circumstances obtaining in the present application are markedly different that any decisions made in 2005 and 2009 that may have a bearing to the issues at hand must of necessity be distinguished and no reliance be given to such decisions which includes the judgment of Wendoh J. In Misc. Application No.348 of 2006 involving General Plastics Ltd –Vs- The Industrial Property Tribunal and Safepak Ltd delivered on 30th of April, 2009.  The Industrial Property Tribunal is the Court of first instance when it comes to issues concerning industrial property.

We are, as a Tribunal that is properly constituted, interested and very keen to discharge our judicial functions fairly as aptly put in Mobil Oil Australia –Vs- FCT, 1963 lib 113 CLR 475 at page 504 when Kitoo J. ruled that “What the law requires in the discharge of a quasi judicial function is judicial fairness.  That is not a label for any fixed body of rules, what is fair in a given situation depends upon the circumstances .................”  This is the fairness we desire to see in the present application.

There is no need to close out a party from tendering evidence, it does not matter the value.  By virtue of Article 159(2)(d) technical or clerical jurisprudence have no room any more.

The circumstances, after the promulgation of the Constitution of Kenya, 2010, have changed in favour of progressive jurisprudence and purposive interpretation of the law where litigation is hinged on fairness and justiceable circumstances as opposed to mechanical or technical issues which deny parties an opportunity to be heard substantially.  The value of evidence is not determined prior but at the end of the trial and more so at the stage of determination.  No one should feel short changed in any manner which leaves a trail of injustice or a perception to such effect.

Application of progressive jurisprudence underpinned on purposive interpretation of the law is to be encouraged.  At opportune moment, interpretation of S.86 (2) of the Industrial Property Act, 2001 is necessary and presentation of additional evidence is useful in assisting the Industrial Property Tribunal interpret the law appropriately on registrability of the subject designs.  This will go along way in stabilizing the practice of law and dispensation of justice in a wholesome manner.

Since the promulgation of the Constitution of Kenya, 2010 and the advent of the new Civil Procedure Act, Rules and the Court of Appeal Rules (Oxygen Rule) a new development has grown in Kenya where adherence to procedural technicalities has largely been ignored or disregarded.  Indeed there is an abhorrence of technicalities in the disposal of justice.

Over reliance on procedural technicalities is well beyond its sale by date.  There is heavy premium placed on the dispensation of justice on substance rather than technicalities.  This is in tandem with Article 159(2)(d) of the Constitution of Kenya, 2010.

This is best exemplified by the views expressed in Equity Bank Limited –Vs- Capital Construction Limited (2012) eKLR by Hon. Mr. Justice Musinga (as he then was) are important to note where he stated that:
“While submission may be right in law, I do not think that in the new Constitutional  dispensation, it can be a ground for dismissing an application for review that is otherwise merited.  I say so because Article 159 (2)(d) of the Constitution   of Kenya, 2010 requires the Court to administer justice without undue regard to procedural technicalities.  The inclusion of such a provision was very deliberate and I believe it was informed by public outcry regarding serious injustices that were occasioned to litigants due to the judiciary’s rigid observance of procedural technicalities .........  If courts continue to accord procedural technicalities undue prominence in administration of justice they will be negating an important Constitutional requirement”                       
We made our position very clear in IPT Case No.36 of 2002 in which a request for additional evidence was being sought and we can only emphasise and adopt the findings in that decision in all its facets and apply similar findings and holdings to the present application.  So we pronounce and order accordingly.

Granting leave for the adducing of further or additional evidence is a discretion that must be exercised with the provisions of the Constitution of Kenya, 2010 in mind since all the prominent issues raised by the Respondent are now no longer possible in the face of Article 159(2) (d) and also Articles 40(5) and (6) of the Constitution of Kenya, 2010.  We hereby reject and dismiss all the objections as laid by the Respondent against the Requestor’s application of 2nd of September, 2011.

We must lay it on the line that we have read and considered all the submissions by all parties here and have analysed the authorities submitted by all parties and each given its due consideration and weight as required by the doctrine of ‘Stare decisis’ and hereby conclude that allowing additional evidence as requested is in furtherance of the doctrine of natural justice and the application thereof so that all parties may be put on equal basis in terms of upholding fairness in a judicial proceeding.

We are alive to the fact that a “Constitution is not a general substitute for the normal procedures for invoking judicial control of administrative action ....................” as was more particularly pronounced by the Court of Appeal of Kenya in the case of Speaker of National Assembly -Vs- Njenga Karume (1990 – 1994) E.A 546 but with the promulgation of the Constitution of Kenya, 2010 we have moved away from such positions.  The finding by the Court of Appeal is distinguishable from the facts of the present case and we cannot rely on it.  The Constitution forms the basis of all reasonable interpretation of the law.  The discretion of the Industrial Property Tribunal is not unduly limited in scope and we adopt a more progressive approach in order that justice may be seen to be done regardless of the final outcome of a case or matter in dispute.  The Industrial Property Tribunal Rules, 2002 are hand maiden of the law.  They are not above statute or Constitution.

The Industrial Property Tribunal has a duty to ensure that adjudication in Industrial Property related matters is in accord with the best international practices.  Prior art arguments must be examined substantially so that no one party may enjoy what it does not deserve and vice versa.  This is just but an investigation and a useful investigation must be exposed to all evidence and issues that may ultimately result in a fair adjudication and conclusion that brings a closure to issues without, of course, blocking any appellate processes available.

The authorities cited by the Respondent cannot largely help it in the present case.  They are distinguishable and as a Tribunal could not be bound to follow them as the circumstances obtaining are markedly different and diverse in nature that it would work a lot injustice to one party at this stage.  All parties must have equal opportunity to present evidence regardless of its probative value in a court that applies the law as it is and as it develops and grows without fear or favour.  Final determination is key to any dispute and due consideration must be given to those involved and concerned to put forth their points of view without any undue obstruction.  It would be legally untenable to front Resjudicata arguments at this stage of the proceedings.

There is need for the Respondent to demonstrate that the rights it acquired upon registration of industrial designs, the subject of litigation herein is above board and such above board status cannot be obtained by raising objections of the nature put forth by the Respondent without looking bad in the face of a liberalised approach to dispensation of justice by the judiciary in Kenya after the promulgation of the Constitution of Kenya, 2010.

The Respondent has placed a lot of prominence on the issue of Resjudicata and we must address it as fully as we can.  It is our understanding that if no foundation of an issue had been raised before in a matter, there is no way the doctrine of Resjudicata can apply.  The Requestor has stated very clearly that the evidence they seek to introduce are a letter from KIPI dated 26th July, 2005 and an affidavit by one Shon Ahmed Morain dated 21st September, 2005.  This evidence was not a subject of the ruling delivered by the Industrial Property Tribunal on the 15th July, 2005.  It is new and in the circumstances we agree with the decision in the case of Pancras T. Sorai –Vs- Kenya Breweries Ltd (2006) eKLR that Resjudicata cannot apply if the evidence had not been considered before like in the present application.

Further we embrace the decision in the Case of Mburu Kinyua –Vs- Gachini Tuti (1978) (KLR 69 per Law JA and Wambuzi JA which established that Resjudicata apply to suits and applications and more so in page 81when it stated that:  “It was held as long ago as 1932 by the Court of Appeal for Eastern Africa that it is only when facts on which a party is relying in second proceedings were not known to him at the time of the former proceedings that the defence of Resjudicata cannot be sustained”.

The Requestor had no such evidence before the Ruling of the Industrial Property Tribunal on 15th July, 2005.  The lawyers acting for the Requestor are not the ones who filed the revocation proceedings.  Due diligence of the new lawyers cannot be faulted and the inordinate delay cannot attach as ruled in IPT Case No.36 of 2002 by this Tribunal.  It is not an issue at all as it is trite law that a party should not be punished for mistakes or lack of diligence by its previous lawyers.

The doctrine of Resjudicata is premised on three maxims that no man should be vexed twice over the same cause; there should be an end to litigation; and judicial decisions must be accepted as correct.   We do not see how the aforementioned can arise in the present application and in any event there is no prejudice to be suffered by the Respondent if additional evidence is allowed to be filed.

The locus classicus on the issue of Resjudicata is the case of “Yat Tung Investments Co. Limited -VS- Dao Heng Bank Limited, 1975 AC 578 at page 590” The following was said thus:
 ”where a given matter becomes the subject of litigation in, an adjudication by, a court of competent jurisdiction, the court requires the parties to that litigation to bring forward their whole case, and will not (except under special circumstances) permit the same parties to open the same subject of litigation in respect of matter which might have been brought forward, as part of the subject in contest, but which was not brought forward, only because they have, from negligence, inadvertence, or even accident omitted part of their case.  The plea of Resjudicata applies, except in special cases, not only to points upon which the court was actually required by the parties to form an opinion and pronounce judgment, but to every point which properly belonged to the subject of litigation, and which the parties, exercising reasonable diligence, might have brought forward at the time.“ 

We adopt the findings in the said case and conclude that there are no Resjudicata issues that could have arisen in the present application.  There is no evidence of lack of diligence or exhibition of negligence in the present application to justify the raising of the Resjudicata defence. 
The need for disposal of matters speedily is good but it must be based on the principles of substantial justice being upheld all the way especially when the acquisition of a property is being questioned.  The grounds of its acquisition are being investigated or is a subject of possible investigation and evidence to that effect if closed out would render the challenge in the revocation proceedings and by extension challenge under Article 40(6) of the Constitution of Kenya, 2010 impractical or impossible.  No one could allow such a situation to exist, least of all this Tribunal.  All must have equal chances in a dispute without a doubt.

In the circumstances, the orders sought in the Notice of Motion application dated 2nd of September, 2011 are hereby granted as prayed.  And by virtue of Rule 24(8) and (9) of the Industrial Property Tribunal Rules, 2002, we direct that the additional evidence shall be filed by way of affidavit.

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