The Respondent is the owner of Registered Design Number 398. The Respondent applied for that Design on 2nd August 2004 and the application was published in the Kenya Industrial Property Institute (KIPI) Journal on 31st October 2005. There being no opposition proceedings, the grant for the Design was published in the Journal on 31st January 2006. A certificate for the Design was issued on 2nd February
It is that Design that the Respondent wishes to have revoked or invalidated and has requested that it be granted an extension of time to file the said proceedings, as time for doing so has expired. That application was brought before any action was filed. The application for extension of time was based on the following issues.
a) That the applicant was not aware that the grant was published?
b) That the Design was not new?
a) Is there a time limit within which revocation or invalidation of proceedings must be filed?
b) If so, does the law expressly or implicitly provide for extension of such period?
c) If so, under what circumstances can the extension be granted?
d) If an extension can be granted, are there grounds for extension in this case?
RESOLUTION OF THE ISSUES
1. Is there a time limit within which revocation or invalidation of proceedings must be filed?
Section 103(2) of the Industrial Property Act 2001 states 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".
A careful reading of that section shows that a party has a period of nine months from the date of publication within which to make an application for revocation or invalidation. There is however no exception to that rule.
The issue of contention, therefore is whether the Tribunal had discretion to extend time for filing an action such as the intended one?
The applicant contends that Rule 33 gives the Tribunal that power while the respondent does not agree. Rule 33 of the Industrial Property Tribunal Rules, 2002 reads that the Tribunal may extend on such conditions as it may specify-
a) a time limit under the Rules;
b) a time limit under the Act or the Industrial Property Regulations 2002, for making an appeal
This Rule does not give the Tribunal power to extend the time limit in the instant case as the relevant time
limit sought to be extended is under the Act and not the Rules. If it was under the Rules then
the Tribunal would have that discretion. Secondly, the application on record is not an appeal and cannot therefore fall under the ambit of Rule 33 1 (b) which clearly refers to appeals.
If the tribunal had the discretion to extend time, are there sufficient or compelling grounds to grant such extension? The Applicant's ignorance of the KIPI Journal could not be a ground for extension of time.
It was incumbent upon it to seek information as to where industrial designs are registered.
As to the second ground advanced by the applicant on the position that the design was not new, the Tribunal was of the view that, that did not fall under the merits of the case since the issue of determination was as to whether there are sufficient grounds to warrant an extension of the time limit, precisely the circumstances that prevented the applicant from filing the action in time.
The respondent contended that the applicant gave notice of its intended proceedings on 8th December 2006 and therefore the delay in filing this application for extension was inordinate. No proof of this notice was available and neither did the applicant address the issue and hence the reason why the tribunal could not pursue it.
The Tribunal therefore found that the ground as above stated could not be an argument for extension of time as and such the Design which was published on 31st January 2006 and therefore the statutory nine months expired on 31st October 2006. Notably, Proceedings were filed on 4th April 2007. The question then was whether a delay of 5 months would be considered inordinate? The Tribunal did not think that a delay of 5 months could be considered inordinate. The applicant however ought to have advanced compelling reasons showing why it was not able to file its proceedings within the specified time limit and which it did not.
The Tribunal was of the view that Perhaps Counsel ought to have addressed the issue of whether the Limitations of Actions Act Cap.22 would cover extension of time in the instant case, if there were compelling reasons offered.
The grounds advanced by the applicant could not support its application even if the Tribunal considered
that it had power or discretion to extend such time.