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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, Raymond Chelulei
Date of Decision: 28th February, 2011
Applicant(s): General Plastics Ltd
Respondent(s): Safepak Limited
Keywords: Prior Art, Design Patent revocation

The Applicant sought leave from the Tribunal to adduce additional evidence. The Applicant sought to prove that the Respondent’s registered design should not have been registered owing to the existence of a similar design registered in Japan. The existence of the prior art prevented the registration of the design in dispute. The Applicant in its motion sought to call for the patent examiner to give evidence. The additional evidence was geared toward helping the Tribunal in arriving at a fair determination of the matter.

The Respondent on their part argued that there was undue delay in submitting the application and it was therefore an abuse of process.

Whether, the applicant was barred from adducing more evidence to support its case.

The Tribunal granted the Applicant leave to produce their additional evidence. The Respondent’s submissions and authorities relied upon to oppose the application were found immaterial.  The Tribunal stated that the Applicant had sufficiently demonstrated that there was no intentional delay on their part and they took all necessary steps to file the motion immediately upon receiving the new piece of evidence. The Tribunal further affirmed its decision by stating the provisions of the constitution that require judicial authorities to administer justice without undue delay on account of technicalities.

Cases Cited
1.    DJ Lowe & Co. Ltd.  Vs  Banque Indosuez (1997) LLR 634 (HCK)
2.    Wanje   Vs   Saikwa (1984) KLR 275
3.    Karmali Tarmohamed & Co. Vs I.H. Lakhani & Co. (1958) E.A. 568
4.    Braddock’s Case (1949) 1KB 47
5.    Masefield Trading (K) Ltd. Vs Kibui (2001) 2 EA 431
6.    Russell Vs Duke of Norfolk (1949) ALL.ER 109
7.    Juma V.AG (2003) 2 EA 361
8.    Board of Education Vs Rice & others (1911) AC 179

The Applicant in this case, Messers General Plastics Ltd filed a Notice of Motion dated 3rd of May, 2010 under S.103(8) and 114(1) of the Industrial Property Act. No.3 of 2001 and Rule 24(8) of the Industrial Property Rules, 2002.

The applicant is seeking that it be granted leave to file additional evidence and further that this Tribunal do direct a Mr. John Maina, Patent Examiner, at KIPI to appear at the Tribunal for purposes of giving evidence.  The applicant also prayed that costs be in the cause.  The grounds in support are brief and would set them as follows:-
i)    That the requestor (the applicant) has obtained evidence confirming the existence of a patent in Japan that is similar to the Industrial Design – No.186,a subject of litigation herein.
ii)    That the evidence does not form part of the record of evidence in support of the applicant’s case for revocation.
iii)    That the applicant could not have filed and or produced the additional evidence at the time of filing pleadings because the same was not in its possession.
iv)    That the evidence sought to be introduced will have the effect of demonstrating to the Tribunal that a prior patent was in existence before the registration of Industrial Design No.186.
v)    That the evidence sought to be introduced could not have been obtained earlier even with the exercise of due and or reasonable diligence.
vi)    That the impact of the evidence will be to demonstrate prior art.
vii)    That the evidence sought to be introduced will have a critical influence on the outcome of the revocation proceedings.
viii)    That in the interest of substantive justice, the Requestor be allowed to adduce the additional evidence.
ix)    That the application has been brought expeditiously and without undue delay.
x)    That the prayers sought will enable the Tribunal to make a just determination of the revocation proceedings.

The applicant’s position is to be gleaned from the affidavit filed thereof by Rashik P. Shah and the lengthy submissions by the counsel for the applicant.  The Tribunal was also supplied with a reading list by the Applicant in terms of case law which was submitted in aid of the Applicant’s case.

The Respondent on the other hand put in a spirited fight by filing a Statutory Declaration in Reply by Tushar Shah and a reading list in support of the Respondent’s case.

The Respondent placed great emphasis on the argument for finality of litigation and lack of due diligence on the part of the applicant and in the circumstances urged that the applicant is undeserving of the Tribunal’s exercise of discretion under the provisions of the law relied upon and the Industrial Property Tribunal Rules, 2002.

The Respondent’s Counsel put in lengthy submission and we are indeed grateful to him for such industry.  This is not to say that the Applicant’s Counsel did not do likewise.  Indeed his submissions lasted for close to a cumulative of eighty-five (85) minutes of this Tribunal’s time of listening and taking notes.  We are, in all, grateful to the lawyers for great flare and industry demonstrated.

The lengthy submissions by the Respondent in issue touched on various points e.g. undue delay, steps taken to prosecute the application, previous rulings by this Tribunal and the various decisions of the Superior Court and whether the additional evidence would have been obtained earlier as the bulwark of the Respondent’s case.  It is the Tribunal’s view that it is not possible to pass any judgment or conclusion on the intended evidence and hence it is not fair to shut the doors to a litigant who desires to produce such evidence.  It would be in breach of the rules of natural justice to do so.

We have considered all the submissions and case law cited by all counsel in this matter.  We have read and understood the import of each case law cited by each of the parties and in this Ruling, have attached weight to each depending on the circumstances.

The present application and the facts thereof are clearly distinguishable from the facts of the case law cited by the Respondent in support of closing out the Applicant’s intended evidence.
In the case of DJ Lowe & Co. Ltd.  Vs  Banque Indosuez (1997) LLR 634 (HCK) we find that the decision thereof is not relevant as it was an application for review.  Nothing is being reviewed in the present application.

 As for Wanje   Vs   Saikwa (1984) KLR 275, when compared with present application, the trial is yet to start, as such, in respect to revocation proceedings.  The evidence sought to be produced may have an important influence on the result of the case, which need not be decisive.  It looks credible though not incontrovertible.  Intellectual or industrial property protection is not to be taken lightly. 

The parties must be on equal footing whilst approaching this Tribunal.  Since there is no hearing on site soon and the revocation proceedings not arising from an appeal or previous hearing, the Respondent cannot run a risk of any injustice be it substantial or otherwise.  There are no weak points addressed previously in this matter to justify a patch up argument as advanced by the Respondent.  This Tribunal finds the evidence needful.  The revocation proceedings are original in nature and this Tribunal is exercising its original jurisdiction as per the law establishing it.  Revocation proceedings are to be instituted in the Tribunal and nowhere else.

The Wanje case was on appeal.  The applicant’s case on the other hand is at its nascent stage hence not a worthwhile comparison, and the Tribunal is happy to distinguish the same in the process but with tremendous respect, not follow or apply the ‘ratio decidendi’ of the said case.

It is fool hardy to entertain the ‘no end to litigation’ argument as the litigation in this matter is just starting.  Where does the ‘no end or finality of litigation’ arise?  It is, in our considered view, irrelevant and non-issue in this application.  There has been no formal trial yet to justify this argument.  

As for Karmali Tarmohamed & Co. Vs I.H. Lakhani & Co. (1958) E.A. 568, it is equally distinguishable in its facts as compared with the present application.  It is not relevant to the case at hand.  The trial has not even started as compared with the facts in the Karmali case cited by the Respondent.

The Mumias Sugar case falls under the same category.  As in the present case no hearing has taken place.  Trial has not started as known in law.  In our well considered view a trial in law means “Conclusion by a competent Tribunal, of questions in issue in legal proceedings whether civil or criminal”.  See Stroud’s Dictionary of Words and Phrases, 6th edition vol.3 pgs 2717-2718.   We entirely adopt this definition.

An effective trial binding on all necessary parties and effective judgment binding on all necessary issues connotes a trial.  It refers or means final determination of the matter and does not cover preliminary applications.   In the circumstances, there is no trial yet in terms of the Industrial Property Act, 2001or in any other way one wishes to look at.

To follow Braddock’s Case (1949) 1KB 47 cited by the Respondent would be setting a dangerous precedent.  It is not enough to churn out authorities without looking at their relevance.  All parties in this matter did not consider this aspect in their research in any substantial or appreciable manner.

The case of Masefield Trading (K) Ltd. Vs Kibui (2001) 2 EA 431 does not even assist the Respondent at all.  It was about curing of a defect.  The applicant in this matter is not seeking to cure any defect.
The permutations of the circumstances under which the Tribunal might exercise its discretion are never closed.
The parties must place all the cards face upwards on the table.
The Applicant and the Respondent placed at the disposal of this Tribunal’s decisions or case law which on facts may not be in all fours with their cases but whatever they are worth, parties failed to notice that the trial has not even commenced and the necessity of all evidence to be presented is essential and an absolute must.  What occurred is the close of pleadings but the window of opportunity to reopen is provided by Rule 24(8) and hence the present application.  Finality in litigation arguments cannot apply in this matter as the initial hearing of the revocation proceedings is yet to begin.  The grant of the orders sought in the application is in accordance with the interest of justice.

We wish however to state in no uncertain terms that we uphold the mutual respect and confidence this Tribunal has in the Superior Court and other courts decisions which have requisite jurisdiction, but deserving case law that ought to be distinguished must be so done without flinching an eye. 

As for previous Tribunal rulings, we state that they are not binding on us and in any event our counterparts held the views in which the Supreme Law then could sustain, but not now.  Each case must be examined and decided on its own set of facts. Law is dynamic, it lives and hence develops and expands with time and the interpretation and comprehensions thereof can always be different.

With respect to Miscellaneous Application No.348 of 2006, between the present Applicant and this Tribunal, we find it not relevant to the proceedings herein and we do not intend to belabour the point in view of the Constitutional provisions obtaining as of now especially in regard to Intellectual Property.
The equity principles of vigilance must cut both ways.  The Respondent cannot pass judgment on the diligence of the Applicant in the circumstances obtaining in this matter and in any event the lack of diligence argument is irrelevant.

The efficacy of the entire arguments has been accentuated by the promulgation of the Constitution on the 27th of August, 2010.  The primary aim of any judicial authority which includes this Tribunal is to do justice to all and without undue regard to technicalities.  The provisions of Article 40 (5) and (6) of the Constitution should not be defeated by anything least of all delay or lack of alleged due diligence.

The delay arguments suffer the same but we shall make short comments not relevant to the case.  They are ‘obiter’ in nature.  The delay in dealing with the cases in the Tribunal has been purely the government’s failure to appoint members and getting the composition right in good time.  This has invariably led to delay in disposal of matters.  We do hope from now hence forth it shall not recur.  The applicant cannot be blamed for this lacuna.  The prevailing circumstances cannot be blamed squarely on the applicant as such.  This is an independent observation by the Tribunal and though not urged by either party, it is fair to say it as it is.

Protection of industrial property is a serious matter and all those who claim exlusivisity must rise above board at all times.  Any challenge must be scrutinized and dealt with fairly without undue reliance to technicalities as stated by the Supreme Law of the land.  Innovations inventiveness and all associated with industrial property must be based on honesty, fairness and integrity.

Previous Rulings by this Tribunal which the Respondent has placed reliance upon are distinguishable.  The applicant has demonstrated why it could not have used the evidence at the first instance when the revocation proceedings were filed.  It is a sufficient explanation in our view. 

This Tribunal is well guided and well equipped to comprehend the issues as ventilated.  This Tribunal is also alive to the rules of natural justice and must proceed to apply.  All parties to a suit must be accorded an opportunity to bring their entire case for decision.  The Applicant’s request falls squarely on this aspect.  We agree with Tucker J. in Russell Vs Duke of Norfolk (1949) ALL.ER 109, at page 118 thereof when he said “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 to presenting his case ……”

The applicant is not asking to present some fool proof evidence, but just some piece of evidence whose proprietary or otherwise is yet to be interrogated.  This Tribunal shall be balanced by weighing all the competing issues before arriving at a decision.  It has no business shutting doors when the window of opportunity is not harmful and or advantageous to any one party at this stage of the proceedings.

The application under consideration is not an abuse of the court as it is known in practice and custom or at all.  It is farfetched a claim to make.

Adducing additional evidence is a matter of discretion for the Tribunal under the law.  Rule 24(8) of the Rules of this Tribunal states as follows: -
              “No further evidence shall be filed except by leave or
                direction of the Tribunal”.
It is clear from the said Rule that the Tribunal is clothed with the necessary power to either grant such leave or direction as may be sought.

The power donated to the Tribunal in Rule 24(8) thereof shall be used sparingly and with great caution.  We have addressed our minds to this aspect and we shall proceed, in the circumstances, to order that the Respondent shall not be unduly affected by the evidence sought to be introduced in any adverse way or at all.  It is in the interest of justice that the application be allowed so that all parties feel the openness and fairness of this Tribunal in its endeavours to dispense justice.

The exercise of such power by this Tribunal is not absolute.  It must be based on fairness and is intended to support substantive justice between competing parties.   This is a pure discretion granted to the Tribunal and it shall be used judiciously as we do in this matter.  There must be a fair hearing in a case and this Tribunal adopts the decision in Juma V.AG (2003) 2 EA 361wholly.  All parties to a case must have their day in court so that it is seen to have been a fair trial.  With the circumstances herein we agree with the decision in Board of Education Vs Rice & others (1911) AC 179.  The Respondent and the Applicant must have equal opportunity to put forth their case.

The party seeking must demonstrate and fit its requests for such power to be exercised on very strong and genuine reasons.  The Respondent’s submission that the applicant did not exercise due diligence in this matter, may sound good albeit irrelevant to the application at hand.  The applicant has however shown that the intended additional evidence was not within its power but with the registering authority and when it obtained, took steps to file the present application.

From the submissions of the Applicant’s counsel, it became clear and obvious that the current Advocates were not the ones on record when the revocation proceedings were initiated.  We can on that ground hold that it is the due diligence of the counsel who came on record which led to the filing of the present application.  Lack of Industry by previous Advocates should not be held against the applicant.

The fact that the additional evidence sought to be produced was with the registering authority (KIPI) tells a big story which for now should be left for analysis as and when revocation proceedings are heard in future.  We have borne in mind the provisions of Article 40(5) & (6) and the definition under Article 260 of the Constitution which have a direct bearing on the relevant issues herein.

The submissions by both counsels on certain levels had better be left for investigation and discourse during the revocation proceedings proper.  It would be highly improper for this Tribunal to analyse each and every bit of the argument as they appear to have veered to a different forum which this Tribunal is not seized of for now.  This is about revocation proceedings; it is not an appeal from the Managing Director as such.  The opportunity to produce such evidence has not arisen anywhere else before.  The effort to close out such evidence at this stage would not only be unfortunate but unjust.  The applicant would unjustifiably be denied an opportunity to be heard on the said evidence not withstanding its efficacy, value or otherwise in the long run.

There is no basis for shutting out such additional evidence at this early stage.  The Respondent has the opportunity to cross-examine the witness and put forth submissions in opposition and as such no prejudice can be caused to the Respondent or at all.  The Tribunal shall have the opportunity to do substantive justice to the parties. 
In the circumstances the application dated 3rd of May 2010 shall be allowed in terms set out thereon.  We shall order that the costs of the application be in the cause given the circumstances after considering the totality of all the issues surrounding this matter.

We further direct that the Applicant herein shall take steps to put in such evidence in the manner prescribed by the law.





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