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Title: Clips Limited v Brand Imports (Africa) Limited formerly named Brand Imports Limited
Venue:  High Court of Kenya at Nairobi
Case ID: Case No. 162 of 2015
Authoring Judge: E.K.O Ogola J
Date of Decision: 4th December 2015
Plaintiff: Clips Limited
Defendants: Brand Imports (Africa) Limited
Keywords:  Trademarks, Counterfeit

Facts:
The Plaintiff sought injunctive orders against the defendant from making threats threat of lodging objections to the Customs Department and the Anti-Counterfeit Authority so as to prevent the sale and importation of the Plaintiff’s goods. The plaintiff had since the year 2010 been selling office reguisites originating from Al Hoshan Stationery and Office Suppliers Co. in Kuwait and Hoshan Pan Gulf based in Saudi Arabia respectively all the said goods bared the marks of Hoshan companies. The plaintiffs in its daily routine advertised in their various catalogues they issued bearing Hoshan marks. The Defendant a registered proprietor of the disputed marks, wrote a letter on the 2nd March 2015 a letter of which made the prevent apprehensive that the Defendant intended to lodge complaints with government authorities as a form of blackmail and extortion to prevent the Plaintiff from continuing to import and sell in Kenya the Goods bearing the Hoshan Marks. According to the Plaintiff, the Defendant’s actions amount to unlawful interference of the Plaintiff’s business. The plaintiff claimed that they were protected by section 10 of the Trade Marks Act.

Issues:
i.    What was the purpose ofsection 10 of the Trade Marks Act with regards to the claims of proprietors or licencees rights to the useof trade marks
ii.    Whether the registrar of trademarks had jurisdiction to issue any injunctive orders
iii.    Whether the supporting and further affidavits of a person who was not a director of the Plaintiff’s company were defective in the eyes of the Court.
iv.    Whether the Court could admit new issues raised by way of submissions in the course of the proceedings
Intellectual Property Law- trademarks-registration of trademarksRights arising from continuous use of unregistered trademark-claims of proprietors and licencees- What was the purpose of section 10 of the Trademarks Act with regards to the claims of proprietors or licencees rights to the use of trademarks- Trademarks Act, sections, 7, 10
Relevant Provisions of the Law
Trade Marks Act (cap 506)
Section 10- Saving for vested rights
Nothing in this Act shall entitle the proprietor or a licensee of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date anterior—
(1) to the use of the first-mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his; or
(2)to the registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his,
whichever is the earlier, or to object (on such use being proved) to that person being put on the register for that identical or nearly resembling mark in respect of those goods under subsection (2) of section 15.
Held:
1.    Section 10 of the Trade Marks Act required that there was no entitlement to the proprietor or a licensee of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his had continuously used that trade mark from a date anteriorinter alia to the use of the first-mentioned trade mark in relation to the goods by the proprietor or a predecessor in his title
2.    The purpose of section 10 of the Trade Marks Act was to protect common rights arising from continuous andbona fide use of an unregistered trademark prior to either the use or registration of the mark in issue. There was also no requirement for a person claiming under section 10 of the Act to be the proprietor of the mark in order to gain the protection of said statutory provision.
3.    Registration of a trade mark did not confer an absolute and exclusive right on the proprietor of the trademarks. The exclusive right to the use of a trade mark given by registration was not infringed in the circumstances where for instant the use was by a person who could prove that he or his predecessors in title were continuous users.
4.    The fact of registration of trade mark per se did not entitle the proprietor of trade mark to an automatic injunction to restrain use of the trade mark by a person who had continuously used the trade mark prior to, during and after the registration of trade mark. In the face of a claim of prior user of trade mark, and absent other strong and cogent evidence, the fact of registration of trade mark did not invariably constitute aprima facie case with a probability of success in the sense of the case of Giella vs. Cassman Brown. Where section 10 was called into play, the court should be careful not to use the fact of registration of trade mark as the sole basis of restraining the use of the trade mark by the person claiming prior use of the trade mark.
5.    Pursuant to section 35 of the Trade Marks Act, the Registrar of trademarks had jurisdiction to only expunge marks from the register but not to issue any injunctive orders.
6.    There was no requirement under the law for a person swearing an affidavit to be a director of a company. All that was required was that the person ought to be familiar with the facts. The deponent would in any circumstance indicate the capacity in which he is swearing the affidavits that he was duly authorized to swear the affidavit and the fact that he was conversant with the matter made the affidavit competent.
7.    The Civil Procedure Rules did not define what an authorised officer of a company was. If the Rules Committee had intended that in cases involving corporations, affidavit be sworn by either directors or company secretaries nothing would have been easier than for it to have expressed so. In such circumstances ordinary meanings of the word authorise would take the ordinary meaning and as such it meant to give authority and was synonymous to; sanction or commission.
8.    New issues could not be raised in submissions. Submissions were not pleadings. Where new issues were raised by way of submissions the court could best ignore them similarly, documentary evidence could not be annexed to submissions and consequently the Court ought to ignore the same.
Application allowed. Respondent to bear costs

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