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Title: London Distillers v Ponu Monu Distillers
Venue: Industrial Property Tribunal
Case ID: IPT No. 47 of 2006
Tribunal Panelists: Moses Kurgat, Maria M. Mutua, Raymond Chelulei
Date of Decision: 7th September, 2011
Applicant(s): London Distillers
Respondent(s): Ponu Monu Suppliers
Keywords: Prior Art, infringement of industrial design

The Applicant stated that it was the registered owner of industrial design No. 376 of a bottle, and that the Respondent had infringed by stocking and selling a design similar to the registered design.  The Respondent argued that the design was wrongfully registered as it lacked novelty and was already considered by prior art, and that therefore it did not meet the statutory requirements for registration.

Whether, the industrial design was properly registered.

The Tribunal held that the Applicant did not adduce sufficient evidence to demonstrate that it was the owner of the design in question. The Tribunal held that the Applicant therefore did not own the design in question, as they chose it from among other designs stocked by its supplier. The Tribunal held that the Applicant also failed to prove any novelty or inventive step in the registration.

Cases Cited
1.    Glenmark Pharmaceuticals Ltd vs Les Laboratories Serviers

The ruling herein sought by the parties is in respect to the application by the Applicant London Distillers for an injunction against the Respondent filed on the 16th of February, 2006 wherein the Applicant sought for orders to restrain the respondent from manufacturing, selling supplying of distributing spirits/alcoholic beverages in bottles similar to those registered by the Applicant.

The Applicant states that it is the registered owner of the Industrial Design No.376 and that the Respondent has injured its registered design by stocking selling and offering for sale the said design without the consent and/or authority of the Applicant.

The Applicant states that as a result of the said infringement it has suffered injury, loss and damage and it is on this premise that the Applicant has moved this Tribunal.

The Respondent herein, Ponu Monu Supplies Ltd appointed its agent by the advocate on record herein on the 9th of March, 2006.

The Respondent further filed to this Tribunal a Reply/Counter Statement dated 16th March, 2006 which counter statement contained its grounds of opposition regarding the applicants Industrial Design No.376 stating that:-

(1)    The Industrial Design No.376 is not capable of recognition by the law as it does not qualify as a design.
(2)    That the Industrial Design herein lacks novelty.
(3)    That the Applicant is not the creator, inventor nor designer of the Industrial Design No.376.
(4)    That the bottle in respect of the Industrial Design has been in use prior to registration by the Applicant.
(5)    That the Industrial Design No.376 should be revoked.

The issues for determination before this Tribunal are therefore as follows:-
(a)    Whether Industrial Design No.376 is duly and properly registered.
(b)    Whether or not the Industrial Design has been infringed by the Respondent.
(c)    The jurisdiction and power of the Tribunal to revoke a license after it has been issued.
(d)    The defense by the Respondent; by applying for revocation of the Design.

The Applicant herein has provided the Tribunal with a copy of the Certificate of Registration dated 17th August, 2005 and the application numbers therein is KE/D/2004/000596. It is important to note that the Applicant herein moved this Tribunal in the first instance seeking protection against infringement by the Respondent of its industrial design No. 376.

Consequently, the Respondent in its Counter Statement confirms that there is registered an Industrial Design No.376 of 2006 but goes further to state that the registration is not recognizable in law and it also lacks novelty.  The Respondent states further that the design has been in use prior to its registration by the applicant.

Whilst recognizing the importance of protection of intellectual property and indeed under S.53 (1) wherein the rights of an owner of an invention are captured this Tribunal takes cognizance of the provisions of the law which are outlined as follows:
1.    The applicant or owner shall be granted the patent upon the fulfillment of the necessary requirements. These requirements are clearly stated within the Act under Sections 23 and 86 and we shall exploit them in due course.
2.    The second is protection from infringement after a grant which is the crux of the applicant’s case.
3.    The third concerns licence contracts to be entered into by the owner of the patent which are subject to obligations on the owner of a patent. The third part is not relevant to these proceedings and we shall therefore not go further into it.

A further look at the rights conferred on the owner of a patent Under S.54(1) will reveal that once a patent is granted the owner is protected from exploitation and infringement of its patent in so far as its making, importing, offering for sale, selling and use is concerned. Further the protection also extends to the stocking of the product for the purposes of offering it for sale, selling or using the product.

In its application for an injunction against infringement the applicant through its employee, one Peterson Gatende swore an affidavit to the effect that the industrial design belonged to the Applicant having been duly issued with a registration certificate on the 17th of August 2005. He goes on further to state in his affidavit that the industrial design was protected for five (5) years from the 3rd of November 2004 with a renewable term of two (2) years upon the payment of the requisite fees. This is supported by the annexure marked “PG 1” of his affidavit and which the Tribunal duly noted.

At the point of filing its application for protection against infringement the applicant was duly entitled to such protection. However as a result of the counter statement filed by the Respondent which counter statement is also its defense, it is incumbent upon the tribunal to deal with the matter of existence of the industrial design.

This Tribunal is therefore required to settle the issue of the existence of the industrial design in order to establish whether the same has been infringed. Indeed the Respondent has made it its defense that the industrial design is not properly registered. 

Pursuant to the foregoing we shall interrogate whether or not the registration of the Industrial Design is proper.  The starting point is therefore to define what an industrial design is.

An Industrial Design as per the Industrial Property Act under Section 84 (1) means any composition of lines or colour or any three dimensional form whether or not associated with lines or colours.

Section 86 (1) states that an Industrial Design is registrable if it is new.

S.86 (2) states an Industrial Design shall be deemed to be new if it has not been disclosed to the public anywhere in the world by publication in tangible form or in Kenya by use or in any other way prior to the filing or where applicable the priority date of the application for registration

For the purposes of this matter we must also examine the qualities of an industrial design. These are it must be visually appealing and perform its function efficiently. An industrial design must also be able to be reproduced by industrial means hence the term industrial design. The Visual appeal is what essentially sets the industrial design from others because this is what distinguishes that particular design from others in the market, thereby capturing the consumers’ eye. The manufacturer of the industrial design is thus able to capitalize on the unique feature of its design to capture the market.

The next question would therefore be, at the time of registration did the Industrial Design No. 376 present any unique or in this case new feature that would set it apart from other bottles? The Respondent in an affidavit sworn by one Mathew Kainuri a collector of used bottles on the 16th of march 2006 states in paragraph 9 of that affidavit that he had been selling bottles identical to the applicant’s industrial design.

Another affidavit sworn by one Nathan Kahiga Mwangi sworn on the same date in support of the Respondent’s counter statement states in part that the said person  a businessman trading in wines and spirits and a client of the Respondent, had been selling spirits of various brands prior that were similar to the industrial design in question. In support of his claim he annexed a copy of a cash sale receipt marked “DG 3” and dated 6th November 2003, which date is prior to the applicant’s application for registration of industrial design no. 376.

The Tribunal has also taken into account the testimony of one Deepak Gaur a director of the Respondent Company. The affidavit sworn by Mr. Gaur IN SUPPORT OF THE Respondent’s counter statement states that the respondent has been in the business of manufacturing and sale of liquor since 2003 and that Mr. Kainuri aforementioned was his supplier of used bottles which the Respondent used to package its liquor for sale and distribution. It is Mr. Gaur’s statement that the respondent had been prior to the registration of the disputed industrial design herein been bottling for sale, liquor in bottles similar to the one in dispute.

There is also the question of the supplier known as M/s Kioo Ltd a glass manufacturer based in Tanzania who happens to supply both the Applicant and the Respondent with bottles for their respective businesses. A copy of a Tax invoice dated 7th October 2005 marked as “DG5” is an annexure supplied by Mr. Gaur wherein it shows that the Respondent received a shipment from the said Kioo Ltd of 4,693 empty glass bottles.

A supplementary affidavit filed on the 20th of April 2006 by the applicant reveals that the applicant acquired its bottles from M/s Kioo Ltd which the applicant states, was commissioned by the applicant to manufacture its design for its own use and supply in 2004 and to support that claim there is annexed a letter from the said M/s Kioo Ltd to the applicant dated 7th  April 2006 and marked as annexure “PG1”. The Applicant avers in its supplementary affidavit that the Respondent’s receipts and invoices are fake and that said suppliers of the Respondent are former employees of the Respondent.

A look at the email annexed to the supplementary affidavit of the applicant and marked “PG 2” sworn by Mr.Gatende, the applicant’s marketing manager reveals that the applicant was to receive bottles manufactured and designed by M/s Kioo Ltd. The same email also shows that the applicant had a variety of bottles to choose from. The same annexure contains an attachment of what is described a 28 ROPP FINISH BOTTLE  which has been designed by M/s Kioo Ltd with drawings and dimensions of the same set out therein.

Looking at the evidence thus far and a reading of the law above hence brings out three Key issues the first of these being Novelty. The second is Prior Art and the third is the existence of an inventive step.

This Tribunal has previously dealt with the question of  Novelty in the matter of IPT CASE NO.58 OF 2009 between GLENMARK PHARMACEUTICALS LTD VS LES LABORATOIRES SERVIER for a design to be registrable under Section 86 (1) Novelty must be proven. The Respondent has duly challenged the novelty of the design in its foregoing evidence.

It is the finding of this Tribunal that serious doubts have been raised by the Respondent. The design has been in the public domain by being produced commercially by M/s Kioo Ltd of Tanzania. The applicant’s annexure marked “PG1” annexed to the supplementary affidavit also indicates that a bottle similar to the one in question i.e. 250 ml Round Bottle with MCA2 finish supplied to the applicant had been supplied previously to other customers with the distinguishing feature being the cork finish.

It is the finding of this Tribunal that the applicants are not manufacturers of the design nor have they licensed M/s Kioo Ltd to manufacture it for them. They did select from M/s Kioo Ltd a design that they used to bottle their product and they did also place an order for the supply of that bottle for their use it to market their products. Can they be called owners of the same? It is our view that they are not.

Regrettably we do not have the evidence from M/s Kioo Ltd on who designed the bottle as neither party called them to give evidence before this Tribunal. They were critical witnesses but in law he who alleges must prove. Since the Applicants allege that it is their design and the same having been contested it was up to them to demonstrate the origin of their design and therefore the right to have it protected.

Does the design demonstrate any novelty as provided under Section 86 of the Act that differentiates it from other bottles so as to qualify for protection? The absence of a counter statement by the Applicant on this issue means other than the Respondents statement hereon we have no demonstration to the contrary by the Applicant and the same goes.

Does the protection describe what specific aspect of the design is to be protected as unique to the Applicant? There is no evidence adduced to this effect which ought to have been done by the Applicant in defending the registration of the design. No details of the registration detailing this have been availed either and it can only be held that the same is not proven.
Prior Art
The Industrial Property Act in S. 86 (3) states that Section 23 (4) shall apply mutatis mutandis in respect of priority dates of an industrial design. S. 23 states that an invention is not new if it is not anticipated by Prior art.
Prior art is Defined in Section 23(2) as everything made available to the public anywhere in the world by means of written disclosure and in this case the drawings and use  of the bottle that is the question of this disputed design constitutes prior art. The question therefore would be did the disclosure occur before the date of filing of the application?

Inventive Step
This matter has already been disposed of in the foregoing as it is clear that the Supplier of the said bottle is the one who designed the bottle which is now the subject of industrial design no. 376

Was the Respondent notified of the infringement by the Applicant before the proceedings and did he defy the same? It is this Tribunal’s view that although the applicant notified the Respondent of the infringement of the purported design, in law the same

 This issue though not affecting the jurisdiction to revoke the license will be material in determining the issue of costs because upon becoming aware of the existence of a registered design the Respondent was statute bound to file revocation proceedings under Section 103(2).

Are the receipts for payments without revenue stamps admissible in evidence? The Stamp Duty Act clearly provides that they are and if anything the Tribunal can only require the bearer to pay up such duty as is due on them within a specific period. In the proceedings the challenge on this aspect of evidence was only made at submission level when proceedings had closed. The receipts and affidavits of the Respondents witnesses had already been produced by consent of both parties through a consent order recorded on the 15th September 2009. The Applicant is therefore estopped from challenging their admissibility at this stage


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