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Title: David Engineering Ltd v Steel Structures Ltd
Venue: Industrial Property Tribunal, Nairobi
Case ID: IPT No. 55 of 2007
Tribunal Panelists: Moses Kurgat, Maria M. Mutua, Raymond Chelulei
Date of Decision: 13th December, 2011
Applicant(s): David Engineering Ltd
Respondent(s): Steel Structures Ltd
Keywords: Revocation of Industrial Design

Facts
The parties to the case are companies engaged in the field of engineering.

The Applicant sought the revocation of the Respondent’s industrial design on account that it did not meet the requirements of the Industrial Property Act regarding originality, and he further claimed that the Respondent was not the inventor of the design.

The Respondent contended that their registered design displayed novelty and uniqueness in the ornamental aspects of the design. Therefore, the grounds for revocation did not have any merit.

Issues
Whether, the industrial design displayed any novelty for it to be registered.

Holding
The Tribunal held in favour of the Respondent and dismissed the application for revocation. The Tribunal in arriving at its decision cited the Applicant’s incorrect citation of applicable law. The reference to patent law was inapplicable in the present case and should not have been entertained. The Tribunal emphasized that the registered design was with regard to the ornamental aspects of the design and not the overall design. The ornamental design was, therefore, validly registered.

Cases Cited
1.    Kestos Vs Kampat & Vivien Fitch Kemp (1935) 53RPC 139, at page 150
2.    Clipsal Australia(Pty) Ltd VS Trust Electrical Wholesalers (2007) SCA 24 (RSA)
3.    JUMA VS A.G. (2003) 2EA 461

Ruling
The Applicant filed a request for revocation or invalidation of an Industrial Design registration on the 27th of April, 2007.  The subject of dispute is Industrial Design No.00321.
The grounds set out in the said request are:-
(i)    That the Industrial Design is not new and original in terms of S.23 of the Industrial Property Act, 2001(sic) and Article 25.1 of TRIPs Agreement;
(ii)    That the Respondent is not the inventor;
(iii)    That the registered design serves the purposes of obtaining a technical result in terms of S.84(2) of the Industrial Property Act, 2001;
(iv)    That the design is obvious and has been in existence in the art, therefore lacks inventive step;
(v)    That the Application contained material misrepresentation;
(vi)    That the requester is an interested person since it is engaged in the production, manufacturing, offering for sale, selling and stocking of Turbine Roofing Ventilators;
(vii)     That the Respondent is not a bonafide proprietor;
(viii)    That the Respondent is using the registration of the Industrial Design to prohibit the Requester (Applicant) from using common knowledge in the art or market;
(ix)    That the registration offends the Paris Convention Treaty of which Kenya is signatory.

On the same date, the Requester, (Applicant) filed a statement setting out particulars of facts as required under Rule 16(1) of the Industrial Property Tribunal Rules, 2002.  It accused the Respondent of fraud, greed, selfishness rapaciousness and bad faith and further that it did not invest anything in obtaining an obvious and common Industrial Design.

The Requestor (Applicant) sought to have the design registered revoked or invalidated as it militates against fair competition, restraint to trade and abuse to consumer rights which disentitles the Respondent to protection conferred by law to bonafide owners of Industrial Designs.   This in our view must be looked at under the theme, concept and spirit of intellectual property which is premised principally on the creation of exclusivity and control of property to right owners.  It must also be read in the spirit of the Competition Act 2010, in which section 24 prohibits abuse of dominant position in a market in Kenya or substantial part of Kenya.  We do not think with respect that the Respondent is abusing the dominant position and it matters in any event that the Applicant did not canvass sufficiently or at all save for stating it in its grounds that it militates against fair competition.  The conduct of the Respondent has not been shown and the use of the registered industrial design was not shown to have the effect of increasing market barriers and/or not benefiting consumers.


The Applicant argued that the registration should have been rejected and or refused by the Kenya Industrial Property Institute (KIPI) hereinafter called KIPI.

The Respondent filed its Reply/Counter Statement on the 25th of June, 2007 in which it stated that the Application for revocation had been filed to delay High Court Civil Case No.189 of 2007 then pending at Milimani, Nairobi – an infringement suit.

Further the Respondent stated that the Applicant had failed to raise any objection during publication period of the Industrial Design application in the Industrial Property Journal and further that the Industrial Design No.00321 was properly processed and a certificate issued to the Respondent on the 29th of April, 2004.

The Respondent also filed further grounds of opposition in which it stated that its design was novel and unique.  When we perused the KIPI file relevant to these proceedings it became obvious to us that the novelty and uniqueness claimed by the Respondent is in respect to ornamental aspects and that is how we will deal with the subject matter of the dispute in this ruling/judgment.

The power of the Tribunal as set out in Section 114(2) provides for confirmation, setting aside or varying an order or decision in question which is a statutory mandate to:-
I.    Re-examine decisions of the Director afresh with a view to uphold them or revoke them.
II.    Sit as an examiner of the application for registration of an Industrial Design and evaluate the decision reached by the examiner
III.    Justify the examiner’s decision
IV.    Provide precedence and consistency of criteria for approval applications for registration
V.    Promote the spirit of the Intellectual Property Act as captured in the preamble

We are categorically certain that by looking at the file from KIPI and perusing it the tribunal is discharging its mandate of exercising powers or reviewing decisions of the Managing Director and personnel of the Institute.

Black’s Law Dictionary defines review as “consideration, inspection or re – examination of a subject or a thing entailing plenary power to direct and instruct an agent or subordinate, including the right to rescind, modify or vacate any action by the agent, subordinate or to act directly in place of the agent or subordinate.”

In the circumstances the tribunal is in its rightful role to re-examine the application for registration of an industrial design afresh and either ratify or invalidate the examiner’s decision. In this case we ratify the registration as done.

The Respondent stated that the design should not be revoked or invalidated as prayed by the Applicant and sought dismissal of the Applicant’s request with costs.

The Respondent on the 15th October, 2007 filed a Statutory Declaration containing up to 24 paragraphs and annexed thereon are exhibits “SS1” and “SS2”.
The Applicant on the 22nd of August 2007 filed a Statutory Declaration in which it stated inter alia that it only became aware of the registered design No.00321 on 13th April 2003 when suit papers in Nairobi Milimani in HCCC No.189 of 2007 were served upon the company.  It stated further that it has been involved in the business of manufacturing, selling, offering for sale, importing, exporting, distribution and installing turbine roof ventilators christened or popularly known as cool vent roof ventilators since 2004.

The said Statutory Declaration raises upto 26 paragraphs in which the Applicant dismisses the Industrial Design registered in favour of the Respondent in similar tone that it was fraudulently obtained and that it breaches international law and national or domestic law.

For starters we would like to discount the argument being fronted that S.23 of the Industrial Property Act, 2001 applies to the issues touching on Industrial Designs.  It deals with patents and nothing else and any reference to the said section when dealing with Industrial Designs is a fallacy and an attempt to mislead the Tribunal.  If parliament intended that S.23 would apply to industrial designs, it would have stated so as it does in respect to sections 30, 32 and 33 as more aptly stated in S.85(2) and S.86(3) of the Industrial Property Act, 2001.  We shall hence not consider suitability of applying S.23 of the said Act to these proceedings and in decision making.

The Applicant was allowed to file another Statutory Declaration on the 4th of October, 2007 in circumstances that are not clear but we shall not deal with such as it has no bearing to the decision or conclusion that we may reach in this matter.

Protection of Intellectual Property of the people of Kenya has been fortified by the promulgation of the Constitution, 2010.  This is aptly stated so in Articles 11, 40(5) and 69 of the Constitution.  Intellectual Property Rights are as good and valid as any other rights e.g. land rights, shares, etc.
The Constitutional protection is further bolstered by near elaborate legislative process, for example, the Industrial Property Act, 2001.

For purposes of this case, the relevant provisions of the Statute we shall consider are those dealing with Industrial Designs in Sections 84 to 93 of the Industrial Property Act, 2001.

A wholesome development of the economy entails protection of innovations that are new and have Industrial applicability.

The growth of the national economy is the duty of the government and all its agencies plus citizenry.  This informs the import and importance of the Vision 2030.  KIPI is charged with the responsibility of ensuring that innovations by Kenyans which includes companies or corporations are given protection as required by law and international practice as may be relevant.

The most significant parts of an application for an Industrial Design are representations of such design or specimens and disclaimers.  The representations are conceived to be the positive claims which define the property.  The inter-actions between the representations and the disclaimers plays a key role in determining whether a design is validly registered and whether it is infringed.

The procedural rules which control the representations plays an important role in defining the limits of what can be registered as a design.  To successfully impugn a registered design therefore, the evidence of an examiner is critical.  It is our considered view that as a matter of substantive law appearance is not limited to visual, alone, the touch and feel of a designed item also form an element meriting protection and hence consideration when one is faced with revocation or invalidation proceedings and/or infringement claim.

From our understanding the Respondent has not claimed ‘invention’ or ‘novelty’ for the whole dome as known since that would not be possible on account of prior art.  From the evidence tendered by the Respondent, it is obvious that several aspect of disclaimer are apparent.  Such partial or apparent disclaimer should identify a part of the designed product by stating, e.g. protection can be sought for the head of the toothbrush, whilst the handle can be disclaimed.  If no disclaimer is made, the Tribunal or the court should treat the full contents of the representation as comprising the design as demonstrated in the case of Kestos Vs Kampat & Vivien Fitch Kemp (1935) 53RPC 139, at page 150.

This would mean that the design might be found to be novel.  However it might render it easy for a competitor to avoid infringement by altering or adding some features so as to give a different overall impression, whilst at the same time taking or embracing the features that embodies registered proprietor’s previous design investment.

The Respondent did make a provision which creates a different ‘overall impression’ on an informed user.  An informed user is that one who is not an initiate, a connoisseur.  He is informed about the design freedom presented by a given field.  Small changes may give a design individual character in a field where design freedom is formed.  An informed user is interested in overall impressions which amounts to such a striking feature that even the competitors’ version would be regarded as creating the same overall impression.

Where the appearance of the product and the nature of the product have an inseparable connection, the product will matter.  The Respondent’s design has novelty of individual character; it is not dictated by functionality as alleged by the Applicant.  It has not been shown how the subject design serves to solely obtain a technical result as set out in Section 84(2) of the Industrial Property Act, 2001.

KIPI has opted for less difficult inexpensive and inconclusive examination and leaves room to the Tribunal to consider the validity of a given design in an inter-parties dispute.  It is however duty of the parties to put forth their position as much as they can.

In order to understand the issues at hand it is advisable to set out the basic definition of design and appearance.

Design:    This entails the appearance of the whole or part of a product resulting from the features of, in particular, lines, contour, colours, shape, texture and or materials of the product itself and/or its ornamentation.

Appearance:
The definition of a design focuses on ‘appearance’ as opposed to idea or overall concept in patents.
‘Appearance’ directs attention to the way the product looks, however there is no requirement that the design be attractive, decorative or ornamental.  The respondent has not been shown to be claiming invention as such.

It has not been demonstrated that there was nothing special, peculiar, distinctive significant or striking about the Respondent’s Industrial design as more particularly held in the case of Clipsal Australia(Pty) Ltd VS Trust Electrical Wholesalers (2007) SCA 24 (RSA) by the Supreme Court for South Africa.  It is a good decision, a well considered one as such which must be read carefully to capture its essence.  We may not agree with the final conclusion but certain aspects of pronouncement are good and we adopt and apply to this case.  The consideration is how the design under scrutiny will appeal to and be judged visually by the likely customer.

The Kenya Industrial Property Institute did not register the design on the basis of it having technical result as alleged.  The Applicant failed to appreciate the grounds used by the Institute that justified the granting of the certificate on the 29th of April 2004.

Territorial nature of industrial property matters calls for care and scrutiny by relevant bodies undertaking review in order to ensure that the processes of the protection are realized.  This is a perfect case that encompasses territorial aspects of an industrial Property matter.

The definition of a design provides a non-exhaustive list of characteristics that can provide appearance e.g. lines, contours, shape, texture or materials.  Weight and flexibility of material used are an important part of the design.

The parties in this case have had great opportunity to put forward their case.  This Tribunal in the process complied with the principle elements set out in the case of JUMA VS A.G. (2003) 2EA 461 in that each one of them has had reasonable time to prepare and that it has an open forum for each party and hence justice has not only been done but it has been seen to be done.  In short it has been a fair hearing on matters actively pursued by the parties.  The Tribunal acted fairly well by listening to both parties and even undertook a visit to the locus quo i.e. the premises of the respective parties as part of hearing and observation in order to have a clear understanding of each party’s position.
We have considered all the evidence and submissions proffered by the parties and have looked at the relevant provisions of the law and more so the provisions of the Industrial Property Act, 2001.

The Applicant has opined that the design registered in favour of the Respondent was unmerited and that it has enjoyed the benefit of an alleged design that was not new and finally that there has been prior art.  The Respondent has argued that its design was registered legitimately.

In the midst of all these we must look at the law as to what it says on the process of challenging a registration of a design as in this case.

The opportunity to initiate revocation is set out in S.103 where it is provided that “Any interested person may in proceedings instituted by him against the owner of a patent, or a registered utility model or industrial design or in proceedings instituted against him by the owner, request the Tribunal to revoke or invalidate the patent, utility model or industrial design registration.”

Whereas in S.103(2) it is provided that
“An interested person may, within a period of nine months from the date of the publication of the grant of a patent, utility model or industrial design, request the Tribunal to revoke or invalidate the patent, utility model or industrial design registration.”

The Applicant must demonstrate how it is an interested person contemplated by Sections 103 (1) and 103(2) of the Industrial Property Act where applicable.  The Applicant claims ‘interest’ on the dome shaped roof ventilators on account of business.  It must have a legal or equitable dimension or basis as mere business assertion is not enough.
An interested person in law is that one who is affected or involved, having a legal right or share in something or a personal or commercial connection with something as per Encarta Dictionary.  The Applicant did not demonstrate what legal right or share in the dome shaped roof ventilators or a legal commercial connection with the dome in question.  The mere act of trading in such domes is not sufficient to bring the Applicant within the ambit of ‘an interested person’ as contemplated by S.103 (1).

The Applicant has not demonstrated to this Tribunal how it is affected by the Respondent’s industrial design in commercial purview and or how its involvement in business or commercial activities is legally affected by the Respondent’s design as registered.

Does that amount to reason enough to challenge the registration of the design in which a Certificate of Registration has been issued to the Respondent?   The Applicant, upon a visit to its premises by the Tribunal, was found to be basically an assembler.  It never demonstrated sufficient capacity to be described as an interested person.  Its claims are purely commercial opportunisms.
Black’s Law Dictionary, 9th edition at page 1257 describes an interested person as “a person having a property right or claim against a thing”.  The Applicant ought to demonstrate a legal or equitable right in the property or a legal claim.  Collectively the meaning afore-mentioned include any aggregation of rights or privileges.  The Applicant is, perse, not an interested person as anticipated by S.103 (1) & (2) of the Industrial Property Act, 2001.  It ought to have shown or ably demonstrated it has a property right or a legal or equitable claim in respect to or against the Respondent’s design.  The fact of being sued by the Respondent

in HCCC No.189 of 2007 does not perse make or translate the Applicant into an interested person under section 103(1) of the Industrial Property Act of 2001.

There is no way that legitimate proceedings can be said to be in place to challenge the registration.  Which-ever way it is looked at, Ss.103 (1) and (2) cannot be read in a literal manner or sense.  It is an embodiment of revocation proceedings and must be read to give meaning to the purpose of the section.  We have given interpretation of statute as deep a consideration in this matter so that we do not reach a distorted conclusion or one not consonant with the law.  We are satisfied with the conclusion we have reached.  The owner’s position must be blameless it should not be based on any illegality or unlawful activities.

The Applicant has not demonstrated proper or sufficient “locus standi” to challenge the registered design.  It has no cause of action known to the law and its request for revocation cannot be entertained by this Tribunal.  It has no claim as known to the law.  It is not litigating on the basis of any legal right in law or on the ornamental aspects of the registered design.  What is registered in favour of the Respondent is relevant in these proceedings.  It is not about prior art issues. 

A party must demonstrate, ably, the reasons or grounds that come in aid of its case in accordance with the law.  Each case must be looked at or decided on its own facts and merits.  Section 103(1) grants one an acquired interest especially when it issued by a registered owner, but it must be in relation to the aspects claimed.  It is not a generalized interest available at will.

There is no ambiguity and or insufficiency to the claims made by the Respondent.  The design sought to be impugned has added something of a substantial character to the existing design or prior art.  The value additions made were not attacked by the Applicant.  KIPI did not grant registration certificate on grounds of research or trial and error.  The registration of the design was stated to be the novelty residing in the ornamental aspect of the article as shown in the representation.  The Applicant has not put forth grounds to challenge ‘novelty residing’ in the ornamental aspects of the design as decreed by the registering authority.

The approach employed by the Applicant in attacking the Respondent’s design are more akin to those of attacking Patents.  There is a whole world of difference on how to treat Industrial Designs as opposed to Patents.  Although we appreciate the industry of the Applicant’s lawyers in putting forth their client’s case, they concentrated the most on patent examples which in the circumstances does not help the Applicant’s case.

Revocation must be based on sound legal principles and grounds.  Revocation should not be availed easily when one considers the provisions of articles 40(5) & (6) of the Constitution 2010.Deprivation of property is a serious issue that must be well grounded in law.  In the circumstances, revocation must be based on certainty not probability. 

The powers to review the actions or decisions of KIPI are bestowed on the Tribunal.  The Applicant had a duty to summon the examiner at KIPI in order that the process leading to the registration of the Respondent’s Industrial design could be scrutinized.

It appears the Applicant expected the Respondent to assemble evidence for its case, a very unfortunate situation indeed!  The Applicant has no business blaming the Respondent for failure to summon or call the examiner.  Each party in a case must assemble its evidence and witnesses without relying on the opponent.

The Tribunal however has had a look at the relevant file of KIPI and has found that the Institute granted the certificate on ornamental aspects which, as stated before, the Applicant did not challenge or attack the same.  It had the opportunity but did not pursue and the loss lies where it falls.  The attempt at revocation or invalidation fails given the circumstances, but the infringement claims remain standing having gone unchallenged.

The Applicant concentrated on revocation perse and did not bother to address the issues raised in the claim previously filed in the High Court to wit HCCC No.189 of 2007.  The claim by the Respondent on infringement went unchallenged by the Applicant.  The consequences of no challenge are obvious.

We did not find any merit in the proposition that the design as registered is in breach of International convention/law or national/domestic law as argued by the Applicant.

The net effect of such conclusion is that there are no valid revocation proceedings.  Costs follow the event as it is dismissed.  The Respondent is left to pursue an inquiry as to damages as prayed in the statement of claim.  The Respondent must pursue the inquiry as prayed in its suit as previously filed in the High Court and subsequently transferred to the Tribunal for disposal with the express consent of the parties herein.

We shall not grant any other prayers sought as it is not necessary to do so.  It will be an academic exercise on the part of this Tribunal to engage in such venture.

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