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Title: R V The Minister for Trade, Director of weights and ,measurements & 3 others ex parte Durran Sounds Investment company & another, Interested party Christopher Kibe & another
Venue: High Court at Nairobi
Case ID: Miscellaneous Application 321 of 2010
Authoring Judge: N.R.O Ombinja
Date of Decision: 3rd October 2011
Applicant(s): Republic ex parte Durran Sounds Investment Company & Another
Respondent(s): The Minister for Trade, Director of weights and, measurements & 3 others
Keywords: Counterfeit goods, Trademarks

Facts
The applicants were charged with being in possession for supply in the course of trade, goods to which a false description was applied contrary to sections 8(1,2 &15) of the Trade descriptions act(506)
The respondents on the other hand stated that the applicants were infringing on the their Intellectual property rights  and the rights of Kenyan consumers to buy genuine products. A charge had been leveled against the applicant vide Chief Magistrate Criminal Case No. 1132/2010. Republic Vs Durran investments company ltd &Arleen Mburu.

Issues
Whether the applicants were entitled to orders of mandamus and prohibition against the respondents

Holding
The court held in favour of the respondents and dismissed the application. The judge stated that the High Court did not have jurisdiction to pre-empt the trial in Nairobi Chief Magistrates Criminal Case No. 1132 of 2010 against the applicants.

Cases Cited
1. Peter Ndirangu Kinuthia Vs officer commanding Kikuyu Police Station and Senior Resident Magistrates Court, Kikuyu (unreported) Civil Application No. NBI. 173 of 2002 (90/2002 OR (CA).

1.The applicant’s case:
That of recent past the applicant has experienced severe hardship particularly on account of the officers of the 1st , 2nd and 3rd respondents harassing and hustling them allegedly because the applicant stocks sub-standard goods at their stores thereby swindling the applicants’ clientele.
Towards that end, the officers of the respondent have been making unsanctioned, unexpected and startling ambushes upon the applicant stores on Gaberne Road and Pangani on baseless suspicions and thereby proceeded to carry out vigorous scrutiny on the applicants equipments.
Despite the various searches, the respondent’s officers have never identified or seized any item that are of second rate quality from the applicant’s stores.
That on the 3rd day of June, 2010 the applicants were served with a search warrant dated 28th May, 2010 issued by the Chief Magistrate Court at Nairobi, which authorized a Benson M. Njoroge, an Inspector of Weights and Measures Nairobi to enter and search for equipments in their stores that are suspected to be of sub-standard quality.
Specifically the warrant was directed at Benson M. Njoroge, an Inspector of Weights, to carry out inspection with respect to the following equipments:
i)         LLC – USA
ii)        PEAVEY ELECTRONICS CORPORATION – USA
The inspector aforesaid was accompanied by four other personnel who acted as his agents. Together the five officers carried out a thorough inspection at the applicants shop at Gaberone Road but did not identify any sub-standard equipment therein. Having failed to get any sub-standard equipment, they proceeded to Thika Road at Pangani Yes Center, where they carried out a further search but with the same result.
Notwithstanding the said officers failure to identify any inferior item at the applicants store the said officers amazingly seized from Gaberone Road Shop;
i)         17 pieces of YAMAHA professional Karaoke Dynamic Sounds.
ii)        1 original cash sale Receipt book number 3003 – 3398.
iii)       1 piece PEAVEY sp two- with 2 speakers.
iv)       1 piece PEAVEY sp Two-singly speakers
 
2. The respondent’s case
That the seizure of the applicant’s goods was effected in exercise of the powers conferred upon by the two aforementioned Acts of Parliament.
That the matter at hand is under the Trade Description Act (Cap 505) Laws of Kenya as opposed to the Weights and Measures Act ( Cap 513) Laws of Kenya or the Standards Act or the Anti-counterfeit Act (Cap 208).
That the first respondent was acting pursuant to its mandate under the Trade Description Act. That the charges as laid under section 8(i)(d) of the Trade Disputes Act where fitness for purpose is in question though the charges complained of are that of having in possession for supply and supplying goods to which a false trade description is applied.
That if an order of MANDAMUS is granted to the applicant, the registered owners of the genuine products will suffer irreparable loss and damages since they will not recover the costs of the invention plus loss of credibility as a result of consumers loosing confidence in their products.
That if the order of prohibition sought is granted, it will infringe the rights of the registered owner to fare trade practice and the right of the consumer.
The first respondent action is in all respects justifiable since he was acting in response to a specific complaint of the registered owners of the Trade mark that the applicant were infringing on the owners intellectual property Rights and the rights of the Kenya Consumers to buy genuine products.
That upon seizure of the goods the first applicant inspected the goods to ascertain whether or not they were counterfeits. The first applicant also compared the genuine and original goods and indeed confirmed that there was misdescription of the goods by the applicants. Having so concluded, he preferred charges.
It was urged on behalf of the Board respondents that the criminal charges against the applicant have proper foundation and basis under the Trade Description Act hence the challenge by the applicants under the Weights and Measures Act (Cap 513) Laws of Kenya does not lie.
 
3.The first and second interested parties case
On behalf of the first and second interested parties, it was contended that the goods were ceased, inspected and subsequently charges were drawn against the applicant on the basis that in the cause of trade, the applicants were supplying goods which were falsely described – counterfeits.
4. Analysis of the evidence
 Subsequently the applicants were charged in Nairobi Chief Magistrate’s Court in Criminal Case No. 1132 of 2010: Republic Vs Durran Investments Company Ltd and Arleen Mburu.
The 1st and 2nd respondents herein carry on the business under the name and style of Credible sounds and are holders of power of Attorney variously issued by the Trade Mark owners of “PEAVEY” “YAMAHA” AND EMINENCE” all of which are registered Trade marks in Kenya. Hence they have power to enforce the attendant rights.
In essence the prosecution’s case relates to an alleged false trade description of the applicants goods which bear the said registered trade mark.
 
 
5. The law
The facts herein disclose contentions regarding Constitutional rights of the parties as well as rights relating to protection of intellectual property, namely, Trademarks.
 
Article 260 of the Kenya Constitution 2010 ought to be read together with Article 40 and 46 of the Constitution. In sum the two articles protect rights to property (article 40) and Consumer Protection (Article 46) respectively.
Intellectual property in this context is a property of the owner of the Trademark. It is protected as a fundamental right under the Constitution of Kenya 2010. Trade mark is associated with a given Company. It differentiates the goods from similar ones manufactured by other manufacturers. Consumers must not be deceived. In effect applicants must not deceive consumers by selling counterfeit goods.
Counterfeit goods have the effect of limiting the property rights of the Companies which own the Registered Trade Marks “PEAVEY” YAMAHA and “EMMINENCE”.
Clearly, therefore, Cap 505 Laws of Kenya abhors false description of goods. The effect of which is to protect the consumer from buying counterfeit goods. It protects the property rights ( read Trade marks of the registered owners of the Trade marks).
6. Findings
The goods forming the substance of the charge will be used as exhibits during the hearing of the above cited case before the Chief Magistrate. Releasing them at this juncture will be steal the thunder from the prosecution. The basis of the charge will disappear so to speak.
In bringing this application the applicant’s in my considered view, are attempting to pre-empt the prosecution of the Criminal Case against them. That will defeat the Constitutional rights of the 1st and 2nd interested parties on this case.
7. Prerogative orders:
The applicants have involved prerogative orders of Mandamus and prohibition. A short discourse in respect thereof is thus imperative.
i)            Mandamus
An order of Mandamus, therefore, cannot quash what has been done. In this case the applicant herein have been charged in Criminal Case No. 1132 of 2010 under the Trade Description Act ( Cap 505) Laws of Kenya.
Having been charged within 3 months of the seizure of the goods the said goods cannot now be returned to them. The same shall be used as exhibits in the said criminal case.
The issue of whether or not the applicant is falsely described their goods, the subject matter of the Criminal charges, or supplied the same to their customer in the course and within the scope of their trade is a question of mixed facts and law which the criminal court will have to deal with at the trial.
In this regard, I call in aid the authority of Peter Ndirangu Kinuthia Vs officer commanding Kikuyu Police Station and Senior Resident Magistrates Court, Kikuyu (unreported) Civil Application No. NBI. 173 of 2002 (90/2002 OR (CA).
 
ii)           Prohibition
 where a decision has been made, whether in excess of its jurisdiction, or in violation of the rules of natural justice an order of prohibition would not be efficacious against the decision so made. Hence an order of prohibition is powerless against a decision which has already been made before an order is issued.
iii)         Conclusion.
On the totality of the available evidence the prerogative order of Mandamus and Prohibition sought are not tenable in law. The High Court do not have jurisdiction to pre-empt the trial in Nairobi Chief Magistrates Criminal Case No. 1132 of 2010 against the applicants.
Let the same criminal case proceed as enjoined by the law. The applicant shall use the defences urged herein during the trial. Whatever the outcome of the trial due process of the law shall have been followed.
For the above reasons this application fails and is accordingly dismissed. In the exhibits in issue and the other Court file. To be returned to the Chief Magistrates Court to be used during the Criminal trial.
It is so ordered.
Dated and delivered at Nairobi this 3rd day of October, 2011
 
 
N.R.O OMBIJA
JUDGE

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