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Title: George Ragui Karanja v Moras group ltd, Naivas supermarket & Safaricom ltd
Venue: Industrial Tribunal Court
Case ID: No.66 of 2012
Tribunal panelists: Moses Kurgat, David Kamau, Job Weloba
Date of decision: 12th February 2013
Applicant: George Ragui Karanja
Respondents: Moras group ltd (1st), Naivas supermarket (2nd), & Safaricom ltd (3rd)
Keywords: Jurisdiction, industrial design

Facts:
The Applicant is the registered owner of an Industrial Design Number 366 granted for the first term for five (5) years and later renewed under the Industrial Property Act, 2001.   According to the Applicant, the design in question has been infringed by the Respondents. The 1st and 2nd Respondents have denied any of the alleged infringements

Issues:
That the Tribunal lacks subject matter jurisdiction because the issues at hand are involving two distinct property rights administered by different bodies created under two distinct statutes

That the Applicant’s trolley does not qualify for registration and maintenance on the register and or it is not the kind of industrial design envisaged under sections 84, 85 and 86 of the Industrial Property Act, 2001, capable of being infringed.

Holding:
The Tribunal held that it has unlimited power to hear and determine the case and the 1st and 2nd Respondents had failed in their arguments to convince the Tribunal that it lacked jurisdiction.

Cases cited:
1.    Owners of Motor Vessels “Lilians” Vs Caltex oil (Kenya) Ltd, 1989 KlR 1 at pages 14 – 15.
2.    James Mwangi Kiaragana Vs Rebecca Njeri (2005) eKLR.
3.    Ruth Nduni Mwithui Vs Mombasa Liner and CMC Motors Group Limited.  High Court Civil Appeal No.56 of 2007
4.    Kagenyi Vs Musirambo (1968) E.A. 43
5.    Armitral Bagwanji Shah Vs. Mash Express Limited and Others, Nairobi HCCC N.1095 of 2005
6.    Owners of Motor Vessel ‘Lillian’s’ Vs Caltex Oil Kenya Ltd (1989) KLR1
7.    Republic Vs Commissioner of Police & 2 Others Exparte Jacob Juma (2005) eKLR.
8.    Gathuna Vs Africa Orthodox Church of Kenya (1982) KLR 356
9.    Christopher Xallion Ondieki Vs Safaricom Ltd (2012) Eklr
10.    Elijah Wambugu Muriithi Vs Moses Mathenge Muriithi, Civil Application No.Nairobi 300 of 1991
11.    Narok County Council Vs Transmara County Council & Another (2000) IEA 161
12.     Wilson Kenyenya Vs Joel Ombwovi, CivilAppeal No.96 of 1998 (2001) 2 E.A. 416
13.    Domodar Jinabhai Co. Ltd & Another Vs Eustace Sisal Estate Ltd (1967) E.A. 158
14.    Rawal Vs The Mombasa Hardware Ltd. (1968) E.A. 392
15.    Tzamburakis Vs Rodoussakis (1958) E.A. 400.
16.    Carmella Wathungu Karigaca Vs Mary Nyokabi Karigaca, Civil Appeal No.30 of 1995
17.    Minister of Home Affairs (Bermuda) Vs Fisher (1980) AC 319 P.C.

Ruling:
The Applicant is the registered owner of an Industrial Design Number 366 granted for the first term for five (5) years and later renewed under the Industrial Property Act, 2001.   According to the Applicant, the design in question has been infringed by the Respondents.

The 1st and 2nd Respondents have denied any of the alleged infringements and have gone ahead to state that there is an issue concerning Copyrights under a different statute which is not within the mandate of the Tribunal herein.

In respect thereof, they have raised issues touching on jurisdiction.  The 1st and 2nd Respondents have argued very strongly that Industrial Property Tribunal lacks jurisdiction to hear and determine the dispute on account of lack of subject matter jurisdiction and the action or issue jurisdiction as espoused in the famous case of Owners of Motor Vessels “Lilians” Vs Caltex oil (Kenya) Ltd, 1989 KlR 1 at pages 14 – 15.

According to the 1st and 2nd respondents the Tribunal lacks jurisdiction because the issues at hand are involving two distinct property rights administered by different bodies created under two distinct statutes.

The Respondents aforesaid have gone further to state that the Applicant’s trolley do not qualify for registration and maintenance on the register and or it is not the kind of industrial design envisaged under sections 84, 85 and 86 of the Industrial Property Act, 2001, capable of being infringed.

On the later we wish to point out that the challenge as to registrability of the design is a matter of evidence which can only be dealt with in a full hearing.  The jurisdiction of the Tribunal is therefore properly invoked by the 1st and 2nd Respondents by a way of defence and challenge to the Applicant’s industrial design.  It is therefore not sincere on the part of the 1st and 2nd Respondents to raise issues of jurisdiction while at the same time indicating what line of defence they are putting up against allegation of infringement.  The 1st and 2nd Respondents have not initiated any revocation proceedings in respect to the industrial design in issue to warrant or justify their arguments.

On the flip side, the issues raised cannot be dealt with as preliminary issues but ought to be canvassed at the hearing of the matter at hand by this Tribunal.  The reasoning behind this is that there are factual basis which must be established from the evidence.  The alleged registration under the Copyright Act, 2001 is prima facie evidence which ought to be tested in a full hearing.  It cannot be dealt with in a preliminary manner.

Prima facie evidence is defined in Black’s Law Dictionary as “that one which will establish a fact or sustain a judgment unless contradictory evidence is produced.”  The essence of prima facie evidence, in this case, the certificate of registration of a copyright by the 1st Respondent, does not shut out evidence to the contrary by the Applicant.  The later has not had a chance to answer such evidence and it would, in the circumstances, be unfair for the Tribunal to divest itself of jurisdiction in the face of transient circumstances. 

The parties shall be at liberty to raise all those issues touching on the capacity of this Tribunal to handle certain aspects.  We have in mind the line of thought adopted by the High Court in the case of James Mwangi Kiaragana Vs Rebecca Njeri (2005) eKlR.  There is no way this Tribunal can be said to lack jurisdiction when obviously there are issues arising that are perfectly within its powers to deal with.  Having jurisdiction is not equal to a possibility of ruling in favour of a particular party in proceedings.

We have the power and authority to deal with issues that are within the province of the Industrial Property Act of 2001.  We cannot possibly divest ourselves of jurisdiction on account of other issues raised in form of a defence to the claims by the Applicant and which in turn are now being used to prop up an argument that this Tribunal lacks jurisdiction.

We refer to the case of Ruth Nduni Mwithui Vs Mombasa Liner and CMC Motors Group Limited.  High Court Civil Appeal No.56 of 2007 by Justice J.M. Ngugi delivered on the 15th of February, 2012, as well the cases of Kagenyi Vs Musirambo (1968) E.A. 43 and Armitral Bagwanji Shah Vs. Mash Express Limited and Others, Nairobi HCCC N.1095 of 2005 by Justice J.B. Ojwang (as he then was) in support of the position taken in this ruling.

The issue of jurisdiction has been discussed at length by the High Court and the Court of Appeal of Kenya of which we are grateful to the 1st and 2nd Respondents counsel for highlighting some of the well reasoned judgments cited.  The High Court has observed whilst adopting the reasoning and judgment in the case of the Owners of Motor Vessel ‘Lillian’s’ Vs Caltex Oil Kenya Ltd (1989) KLR1that jurisdiction flows from the law, the recipient court is to apply the same without any limitations embodied therein, such a court cannot arrogate to itself jurisdiction through the craft of interpretation, or by way of endeavors to discern or interpret the intention of the legislature, where the wording of legislation is clear and there is no ambiguity.

The statute donating power to this Tribunal is clear and is not ambiguous.  The Applicant is pursuing a cause for protection of its prescriptive rights acquired under the provisions of the Act in question and it should not be denied to pursue them to its logical conclusion.  The existence of other competing rights (which are yet to be conclusively proven) against the Applicant’s industrial design, derived from another statute, is not a bar to the Tribunal hearing the dispute in issue.  The 1st and 2nd Respondents have an opportunity to argue their defence as they may deem necessary.

The 1st and 2nd Respondents cannot use the argument on jurisdiction to deny the Applicants the opportunity to be heard in an otherwise relevant forum.  They are before this Tribunal in pursuit of attempts to protect their fundamental right as more particularly enshrined in Article 40(5) and (6) of the Constitution of Kenya, 2010.

On a cursory look the Industrial Property Tribunal has the primary (original) jurisdiction on matters falling under the Industrial Property Act, 2001.  We shall not countenance a miscarriage of justice that may be visited upon the Applicant.   Our overriding concern is to do justice and not to be swayed by technicalities.  We cannot disregard the importance of jurisdiction, it contributes to orderly administration of justice, certainty, predictability, scholarship and accuracy as more aptly put in the case of Republic Vs Commissioner of Police & 2 Others Exparte Jacob Juma (2005) eKLR.  We have looked at the substance and contents of the arguments made and also whether there can be prejudice and violation of the Constitution of Kenya as stated in the case of Gathuna Vs Africa Orthodox Church of Kenya (1982) KLR 356 and we have found none.  The overall intent is to do justice.  The capacity of this Tribunal to discern and comprehend issues that are properly for declining jurisdiction or otherwise is not in doubt and more particularly so when that stage is reached.

The 1st and 2nd Respondents arguments cannot provide an answer as to the way forward if the Industrial Property Tribunal granted their prayers.  The opposite arguments can be mounted at the Competent Authority under the Copyright Act, 2005 to no end.   The Tribunal shall not run away from issues relevant and where it has power to do so, as doing otherwise would be shucking responsibility when the High Court is busy channeling matters to it on account of the Superior court’s lack of jurisdiction as more particularly demonstrated by the decision of Justice Musinga (as he then was) in the case of Christopher Xallion Ondieki Vs Safaricom Ltd (2012) eKLR in which he ruled that the proper forum for determining issues raised is at the Industrial Property Tribunal established under S.113.  The reasoning behind this is that the jurisdiction of the High Court is appellate under S.115 of the Industrial Property Act, 2001 and all matters of a primary nature ought to be dealt with by the Tribunal.

The Respondents’ objection must come to a stop for now.  Any attempt to deny Industrial Property Tribunal jurisdiction is to undermine its authority and such attempts must be halted so as not to shrink its mandate in the face of an allegation that a copyright is registered.  The prove of such allegation is a matter of evidence; prima facie evidence is not conclusive.  We cannot grant substantive orders on prima facie evidence situations.  It would be a travesty of justice.

There are processes of dealing with such when situations arise and which can only be dealt with in a full hearing of the dispute at hand.  To do otherwise is to create a quagmire.  We retain the power as a court of law to halt abuse of process and have to ensure that its operations and processes are not inhibited by crafty litigants who engage in unnecessary maneuvers that saps energy, time and resources in a negative manner that may derail the benefits under Article 159 (2) (d) of the Constitution of Kenya 2010 and ultimately access to justice by others under Article 48 of the Constitution of Kenya, 2010.

The issue at hand is closely tied to the validity of the Industrial Design No.366 registered under the Industrial Property Act, 2001 in which the Tribunal has requisite jurisdiction power and capacity to deal with.  No litigant should be left without a remedy or a forum to ventilate its case as demonstrated by the below quoted cases:
Elijah Wambugu Muriithi Vs Moses Mathenge Muriithi, Civil Application No.Nairobi 300 of 1991; Narok County Council Vs Transmara County Council & Another (2000) IEA 161; Wilson Kenyenya Vs Joel Ombwovi, CivilAppeal No.96 of 1998 (2001) 2 E.A. 416; and Domodar Jinabhai Co. Ltd & Another Vs Eustace Sisal Estate Ltd (1967) E.A. 158.

A court of justice has no jurisdiction to do injustice and where an injustice is apparent and or is likely to occur in a judicial proceeding, it must be stopped - dead on its tracks.  It is necessary to prevent an injustice from occurring by careful consideration as demonstrated in Rawal Vs The Mombasa Hardware Ltd. (1968) E.A. 392.  This is what we are doing in the situation obtaining here.

A Court of law, which this Tribunal is by all means, should proceed in a manner calculated to promote justice within the bounds of law and procedure.  Decision as to jurisdiction is not a preliminary decree and hence the issue must be decided on concrete reasons and grounds as pronounced in the case of Tzamburakis Vs Rodoussakis (1958) E.A. 400.

Jurisdiction cannot be decided by an erroneous finding or submission by counsel appearing for parties.  See Carmella Wathungu Karigaca Vs Mary Nyokabi Karigaca, Civil Appeal No.30 of 1995.

The sum total of all these is that the 1st and 2nd Respondents’ arguments on jurisdiction must fail and so they do with a thud!  Jurisdiction is everything and this can only be ousted by clear, solid grounds.  It is the foundation in any litigation issue and the Court or Tribunal must be possessed of to be able to make a decision.  It is trite law that without jurisdiction, there is nothing and any decision made without it, is nothing.

The 1st and 2nd Respondents have failed to convince by their arguments that this Tribunal lacks jurisdiction to hear and determine on the basis of lacking the subject matter and action (issue) jurisdiction.  What does to hear and determine mean?  According to Encarta Dictionary to hear includes presiding over something, to consider something officially as a judge, commissioner or member of a jury.  While to determine includes deciding something, find out something, set limits of something, or influence something.

In order to make a decision or make a finding in any matter, a Court of law or a Tribunal must of necessity hear and determine whether it has capacity authority or power to continue or stop to deal or handle such a matter.  It is about interrogating the subject matter at hand before deciding which way forward. 

The power to hear and determine is therefore unlimited as it does not mean dealing with the matter in a manner contrary to what the law requires.  This includes reaching a conclusion whether the court and or the Tribunal has jurisdiction or not.  The hearing and determination is not conditional to reaching conclusion that it may have power.  This line of thought is in support of the purposive interpretation in order to allow for the development of the law and the expansion of its application taking into account that the law should always speak.  It is intended to improve access to justice as stated in Minister of Home Affairs (Bermuda) Vs Fisher (1980) AC 319 P.C. as per Lord Wilberforce.  The parties in this matter deserve to be accorded adequate access to justice even if it is to say nothing useful in the long run in the process of litigation.

The issue of jurisdiction should not be used as a tool of suppression of issues or as a bar to ventilation of issues.  The ultimate power to discern whether there is jurisdiction is for the court or the Tribunal to make and not parties who are involved in the dispute.  No one party can impose an argument which is intended to bar another from robustly raising issues which can be buried if the issue of jurisdiction is not carefully scrutinized.

The argument that there are two distinct intellectual property rights administered by different institutions created under two distinct statutes is no reason to call for downing of the tools.  The 1st and 2nd Respondents are yet to convincingly establish that the situation is conclusive and in the circumstances, the Tribunal should down its tools. 

The downing of tools must be done where it is obvious.  The fact of a registration under the copyright regime is prima facie evidence, the later is not conclusive, and it is so transient to place any importance and even more risky to rely on such evidence, that is yet to be tested, to decline or divest an institution like Industrial Property Tribunal of jurisdiction.  To defeat the rights of another requires strong irrefutable evidence.  All circumstances must be considered before downing of the tools as proposed by the 1st and 2nd Respondents.
 
The 3rd Respondent took a near disinterested position in the arguments but we are indeed grateful for their submissions which we have looked at before writing this ruling.  Indeed we have considered all the submissions filed in regard to the matter at hand.  We welcome useful contributions by lawyers who are keen to see the growth expansion and protection of intellectual property rights in Kenya.  It may sound too remote but there is   need for an establishment of one umbrella Intellectual Property Tribunal so that the parties are not left stranded or being shunted from one forum to another unnecessarily as exemplified by the 1st and 2nd Respondents’ conduct, intent and arguments.

The 1st and 2nd Respondents fail in their attempts as at this stage.  The said 1st and 2nd Respondents shall pay the costs for the undeserved time spent on the unwarranted issues raised thus far.  Such costs shall be on a higher scale.


DATED:   this    12th         day of     February,    2013   


Signed:
KURGAT M. K.                 -        CHAIRMAN       
ENG. DAVID KAMAU    -    MEMBER
WELOBA JOB        -    MEMBER

Read and delivered in open court this 12th day of February, 2013
In the presence of counsel for parties as set below:         
                   
Mr. Olonde for the Applicant.

Mr. Mwangi for 1st & 2nd Respondents and also holding brief for 3rd Respondent.

 

 

 

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