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Title: Black & Beauty Products Ltd v Stripes Industries Limited
Venue: Court of Appeal Nairobi
Case ID: Civil Application Number 303 of 2004
Authoring Judge: E.M. Githinji, P. N. Mwaniki, W. S. Deverell
Date of Decision: 22nd October, 2004
Plaintiff(s): Black & Beauty Products Limited
Defendant(s): Stripes Industries Limited
Keywords: Trademark Infringement, Passing Off

Facts
The present case was an application to stay for stay from execution of judgment of the high court. Stripes Industries Limited (respondent herein) was the plaintiff in the civil suit filed in the high court. In the suit the respondent claimed that Stripes Industries Limited (Appellant herein) had infringed its trademark “YASMINA”. The respondent was trading using the mark “MINA’ and “NEW MINA”. The high court held that the appellant was infringing the respondents’ trademark. The court gave injunctive orders restraining the appellant from using the mark “MINA”. Black & Beauty Products Limited was aggrieved by the decision and lodged an appeal.

Issues
Whether, the application for stay of execution of judgment had merit.

Holding
The court of appeal dismissed the application. The court observed that the applicant had not adduced sufficient evidence to warrant stay of execution. It was found that the applicant could still continue trading in spite of the judgment as all it had to do was change its name.

Ruling
This is an application under Order 5 (2) (b) of the Court of Appeal Rules, for stay of execution of judgment of the superior court (Emukule J) delivered 13th October, 2004 in High Court Civil Suit No. 1182 of 2000 (the suit) pending the appeal.
The applicant is Black and Beauty Products Ltd. Which was the defendant in the suit? The respondent is Stripes Industries Limited which is the proprietor under the Trade Marks Act (Cap 506) of the mark “YASMINA” in class 26 Part A schedule III in respect of inter alia hair additions, hair attachments and hair pieces.
The applicant has been using the word “MINA” and the phrase “NEW MINA” in respect of similar products. The applicant sought but failed to achieve registration of these as its Trade Marks. The respondent as plaintiff in this suit against the applicant prayed for the following relief;
1.    A declaration that the Plaintiffs’ Trade Mark 39458 “YASMINA” in class 26 is valid and has been infringed by the defendant.
2.    An injunction restraining the defendant whether by itself its directors, officers, employees servants or agents or otherwise howsoever from manufacturing, importing, distributing, selling or offering for sale any hair braids and hair pieces bearing the Trade Mark “NEW MINA” which is similar to the plaintiffs; trademark YASMINA where application for the same Trade Mark has not been authorized by the Plaintiff or otherwise passing off the Registered Trade Mark 39458.
3.    An order that the defendant discloses the names and addresses by whom it has been supplied and to whom it has supplied goods falling within the provisions of paragraph 2 above together with the dates and details of quantities so supplied.
4.    An enquiry as to damages or at the plaintiffs’ option an account of profits made by the Defendant by the aforesaid infringement of the Trade Mark 39458 YASMINA and the aforesaid passing off by the Defendant and an order for payment of any sums found due together with the interest thereon at court rates.
5.    Costs of this suit.
 
The Superior Court found in favour of the respondent that the applicant was infringing on the respondent’s YASMINA Trade Mark and is set out in the Decree made the following orders;
IT IS HEREBY ORDERED
THAT an injunction be and is hereby issued the defendant whether by itself its directors, officers, employees servants or agents or otherwise howsoever from manufacturing, importing, distributing, selling or offering for sale any hair braids and hair pieces bearing the Trade Mark NEW MINA” which is similar to the plaintiffs; trademark YASMINA where application for the same Trade Mark has not been authorized by the Plaintiff
THAT the Defendant do pay the costs of this suit to be taxed and certified by taxing master of this honourable court
GIVEN under my hand and seal of the court on this 13th day of October, 2004.
In order, to succeed in this application the applicant has to satisfy us on two matters before we can proceed to exercise our unfettered discretion in favour of granting the stay sought. The first of these is to establish the intended appeal is an arguable one and the second is that if we do not grant the intended stay sought and the appellant subsequently succeeds on the appeal the appeal will be rendered nugatory. We will deal with the nugatory limb of the argument first.
If the Applicant wins the intended appeal it will mean the applicant is no longer subject to the injunction granted by the superior court (Emukule J) and may recover some costs.
It will be seen from the wording that it only prohibits the hair pieces from bearing the trade mark “NEW MINA”. It does not in any way inhibit the manufacture, importing, distributing, selling any hair braids or hair pieces that do not bear the Trade Mark “NEW MINA”.
The applicant claims in paragraphs 13 and 15 of the affidavit in support of the Motion;
That in the event a stay is not granted the Applicant will have to close down its operation and the appeal will therefore be rendered nugatory.
That the execution of the orders of the superior court will completely paralyse the Applicant.
That an injunction in the nature ordered by the superior court will completely paralyse the Applicant with serious financial losses and create many of the complications.
That the Applicant will have to lay off its workers and close down its operations.
That it has taken the Applicant many years to build the brand “NEW MINA” with lots of quality investment and advertising and it would be too expensive to drop the trade name.
The Appellant has not given any detailed evidence to explain why it will not be possible for it to continue in business selling etc without the “MINA” Trade Mark. It may be some extra costs will be incurred but to suggest that it will be impossible to operate at all appears to be an exaggerated claim not established in the applicants’ affidavit.
It is relevant to the present application that the superior court having found that the applicant was infringing the Respondent’s trade mark and ordering the injunction against the continued infringement, did not make any of the orders sought in prayers 3 and 4 of the plaint.
There has not, so far as we are aware from the documents placed before us in the current application, been any cross appeal filed by the respondent with respect to orders in terms of prayers 3 and 4 of the plaint.
It is therefore clear that if the interim injunction now sought was to be granted by us and the appeal was subsequently dismissed, the respondent would not be entitled to damages for the continued infringement between now and the appeal decision.
For the above reasons we have come to the conclusion that the appeal will be rendered nugatory by the refusal of a stay of execution pending the appeal.
Having found so there is no need for us to go into detail with regard to the second limb as to why we think it is arguable.
Accordingly we order that the application for stay of execution be and is hereby dismissed with costs.

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