Bakhresa Food Products (K) Limited v Advent Limited [2017] KEHC 9746 (KLR)

REPUBLIC OF KENYA

IN THE HIGH COURT OF KENYA AT NAIROBI

MILIMANI LAW COURTS

COMMERCIAL & TAX DIVISION

CIVIL SUIT NO. 435  OF 2016

BAKHRESA FOOD PRODUCTS (K)  LIMITED..............PLAINTIFF

VERSUS

ADVENT LIMITED..........................................................DEFENDANT

RULING

[1]The Notice of Motion that is the subject of this Ruling is dated 31 August 2016. It was filed by Plaintiff/Applicant, Bakhresa Food Products(K) Limitedunder a Certificate of Urgency on 26 October 2016pursuant to the provisions of Section 1A, 1B, 3A and 63(c) of the Civil Procedure Act, Chapter 21 of the Laws of Kenya, as well as Order 40 Rule 1, 2 and 9 and Order 51 Rule 1 of the Civil Procedure Rules, 2010for following orders:

[a] That the application be certified as urgent and heard ex-parte in the first instance, (spent);

[b] That the Defendant, whether by itself, directors, agents, servants, employees, successors and/or assigns or any persons  acting under their direction or instructions or otherwise howsoever     or any of them, be restrained by an Order of Temporary Injunction from manufacturing, packaging, advertising, promoting, selling and/or offering for sale, distributing, displaying or otherwise using  or dealing with the product Uhai Premium Drinking Waterin its  present packaging, labelling and get-up which singly and/or in combination infringe the Plaintiff's "Uhai" trademark pending the inter partes hearing and determination of this Application (spent);

[c] That the Defendant, whether by itself, directors, agents,servants, employees, successors and/or assigns or any persons acting under their direction or instructions or otherwise howsoever  or any of them, be restrained by an Order of Temporary Injunction from manufacturing, packaging, advertising, promoting, selling  and/or offering for sale, distributing, displaying or otherwise using  or dealing with the product Uhai Premium Drinking Waterin its  present packaging, labelling and get-up which singly and/or in combination pass off the Defendants Uhai Premium Drinking Water as sourced from or associated with the Plaintiff's "Uhai"  trademark pending the inter partes hearing and determination of the application (spent);

[d] That the Defendant, whether by itself, directors, agents,  servants, employees, successors and/or assigns or any persons acting under their direction or instructions or otherwise howsoever  or any of them, be restrained by an Order of Temporary Injunction from manufacturing, packaging, advertising, promoting, selling  and/or offering for sale, distributing, displaying or otherwise using  or dealing with the product Uhai Premium Drinking Waterin its  present packaging, labelling and get-up which singly and/or in combination infringe the Plaintiff's "Uhai" trademark pending the inter partes hearing and determination of the suit;

[e] That the Defendant, whether by itself, directors, agents, servants, employees, successors and/or assigns or any persons   acting under their direction or instructions or otherwise howsoever   or any of them, be restrained by an Order of Temporary Injunction from manufacturing, packaging, advertising, promoting, selling  and/or offering for sale, distributing, displaying or otherwise using  or dealing with the product Uhai Premium Drinking Waterin its present packaging, labelling and get-up which singly and/or in combination pass off the Defendants Uhai Premium Drinking Water as sourced from or associated with the Plaintiff's "Uhai"  trademark pending the inter partes hearing and determination of the suit.

[f] That the costs of the application be borne by the Defendants  in any event.

[2] The application is supported by the affidavit of Hussein Suffian annexed thereto,  sworn on 31 August 2016 as well as the grounds set out on the face of the Notice of Motion. By way of a summary, those grounds are that, the Plaintiff is the sole lawful proprietor and the registered owner of the trademark "Uhai" which was registered under the Trade Marks Act, Chapter 506 of the Laws of Kenya, as Trade Mark No. 54822 on 15 July 2003. It was averred that the registration and renewal thereof was valid at all material times, the last renewal having been made for a further period of 10 years from 15 July 2013. The Plaintiff contended that, in March 2016, it became aware that the Defendant was manufacturing, marketing and selling a product under the name Uhai Premium Drinking Water (the Offending Product), which infringes its trademark.

[3] It was further contended by the Plaintiff that the Defendant's infringement as aforesaid is occasioned by the manufacturing, packaging, marketing and sale within the Kenyan market in the course of the trade, without the Plaintiff's consent and for the Defendant's own commercial benefit, a non-alcoholic drink whose labeling is deceptively and/or confusingly similar to the Plaintiff's own well known trademark "Uhai", also sold within the Kenyan market. It was the contention of the Plaintiff that the continued use by the Defendant of the Plaintiff's trademark by way of packaging and sale of the Offending Product without the Plaintiff's prior authorization or consent, will result in the general public being confused as to the origin of the Defendant's product and/or cause the public to believe that there is a connection between the Defendant's product and the Plaintiff's, which is, in fact, not the case.

[4] The Plaintiff further complained that the Defendant had intentionally adopted key distinctive elements of its trademark with the intention of taking advantage of the goodwill related to the get-up to confuse consumers; and therefore amounts to a violation of the Plaintiff's rights under Section 7 of the Trade Marks Act. The Plaintiff is therefore apprehensive that the continued unlawful use and misrepresentation of its trademark by the Defendant will cause it irreparable harm; hence its prayer for temporary injunction, pending the hearing and determination of this suit. Annexed to the Supporting Affidavit are copies of the Certificate of Registration of the Plaintiff's trademark, Certificate of Renewal as well as the notices sent to the Defendant in connection with the alleged infringement, to which the Defendant is said to have failed to respond todate.

[5] Upon the application's presentment, directions were given on the 18 October 2016 for the same to be served on the Defendant for inter partes hearing thereof on 7 November 2016. An Affidavit of Service sworn on 31 October 2016 by Njora Waweru, Advocateconfirmed that the application together with a Hearing Notice for 7 November 2016 were duly served on the Defendant; whereupon Prayer 2 of the Notice of Motion dated 31 August 2016 was granted pending inter partes hearing of the application on 13 February 2017. Similarly, although a Hearing Notice was duly served for  13 February 2017and an Affidavit of Service filed to that effect on 10 February 2017, there was no appearance for or by the Defendant on 13 February 2017. The Defendant also failed to show up either on 21 June 2017 when the case came up for mention, or on 24 July 2017 when the application was up for inter partes hearing. In effect therefore, the Defendant failed to take advantage of the numerous opportunities that were availed to it to defend the instant application.

[6] In support of the application, the Plaintiff relied on its written submissions dated 24 July 2017which were briefly highlighted by Ms. Mutegi. She reiterated the Plaintiff's averments and urged the Court to find in their favour. She proposed the issue for determination to be whether the Plaintiff has satisfied the principles laid down in the case of Giella vs. Cassman Brown & Co. Ltd [1973] EA 358, to warrant the issuance of the orders sought, adding that the deliberate and unlawful use of its trademark by the Defendant constitutes a restrictive trade practice as set out under the Competition Act, 2010, which is prohibited under Section 21(3)(h) of the said Act.

[7] On whether the Plaintiff stands to suffer irreparable loss if the injunction is not granted, it was the submission of Counsel that the Defendant's continued infringement of its trademark is consistently chipping away at the reputation and good-will acquired by it in the course of its trade since the registration of the trademark; which will, ultimately be irremediable. Thus, on the authority of Naftali Ruthi Kinyua vs. Patrick Thuita Gachure & Another [2015] eKLR, Counsel urged the Court to find that even the balance of convenience is in favour of the Plaintiff, granted the inconvenience and grave prejudice it stands to suffer if the injunction is refused. She also relied on the following authorities:

[a] East African Development Bank vs. Hyundai Motors Kenya Limited [2006] eKLR;

[b] Mrao Ltd vs. First American Bank of Kenya Ltd & 2 Others [2003] eKLR;

[c] Vivo Energy Kenya Ltd vs. Maloba Petrol Station Ltd & 3  Others [2015] eKLR;

[d] Nguruman Ltd vs. Jan Bonde Nielsen & 2 Others [2014] eKLR

[8] I have carefully considered the application, the grounds relied on as evinced on the face of the application and the Supporting Affidavit as well as the written submissions filed on behalf of the Plaintiff, including the authorities relied on therein. At this interlocutory stage, the Plaintiff need only satisfy the Court that the conditions for the issuance of a temporary injunction as laid down in the case of Giella vs. Cassman Brown & Co. Ltd [1973] EA 360have been met. It was held thus, in that case:

"The conditions for the grant of an interlocutory injunction are  ...well settled in East Africa. First, an applicant must show a    prima facie case with a probability of success. Secondly, an  interlocutory injunction will not normally be granted unless  the applicant might otherwise suffer irreparable injury, which  would not adequately be compensated by an award of   damages. Thirdly, if the court is in doubt, it will decide an  application on the balance of convenience."

[9]The answer to the question of whether or not the Plaintiff has made out a prima facie case stems from a consideration of Section 7(1) of the Trade Marks Act, which provides thus:

“Subject to the provisions of this section, and of sections 10 and 11, the registration (whether before 1stJanuary, 1957) of a person in Part A of the register as the proprietor of a trade mark if valid gives to that person the exclusive right to the use of the trade mark in relation to the goods or in connection with the provision of any services and without prejudice to the generality of the foregoing that right is infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of permitted use, uses a mark identical with or so nearly resembling it as to likely deceive or cause confusion in the course of trade or in connection with the provision of any services in respect of which it is registered, and in such manner as to render the use of the mark likely to-

[a] be taken either as being used as a trade mark;

[b] be taken in a case in which the use is upon the goods or in physical relation thereto or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or as licensee to use the trade mark or goods with which such a person is connected in the course of trade;

[c] be taken in a case where the use is use at or near the place where the services are available for acceptance or performed or in an advertising circular or other advertisement issued to the public or any part thereof, as importing a reference to some person having the right either as proprietor or as licensee to use the trade mark or to services with the provision of which such a person as aforesaid is connected in the course of business;

[d] cause injury or prejudice to the proprietor or licensee of the trade mark”.

[10]The Plaintiff has adduced uncontroverted evidence to demonstrate that it is the registered owner of the trademark "Uhai" which was registered under the Trademarks Act, as Trade Mark No. 54822 on 15 July 2003. The Certificate of Registration was exhibited herein as Annexure ASB-1 to the Supporting Affidavit. It confirms that the Plaintiff's "Uhai”trademark was registered under Class 32 (Mineral and aerated waters and other non-alcoholic drinks) with effect from 15 July 2003. It was further shown by the Plaintiff that the registration was renewed for a further ten years vide the Certificate of Renewal marked Annexure ASD-2 from 15 July 2013.

[11]  There is further cogent evidence from the Plaintiff to show, on a prima facie basis that, during the period aforesaid, it became aware, in March 2016,that the Defendant was manufacturing, marketing and selling a product under the name Uhai Premium Drinking Waterin infringement of its registered trademark. The documents annexed to the Supporting Affidavit and marked ASB-3 confirm that the Defendant, Advent Limited, has apparently been manufacturing, packaging, marketing and selling, within the Kenyan market in the course of the trade, a product similar to the Plaintiffs in every sense in terms of get-up. According to the Plaintiff it has not given any authority to the Defendant to use its get-up as a licensee or otherwise. Indeed it was the contention of the Defendant that the infringement complained of was for the Defendant's own commercial benefit, and was done with the sole object of deceiving and confusing customers in the Kenyan market for its own gain.

[12]  Accordingly, it was the submission of the Plaintiff that the continued use by the Defendant of the Plaintiff's trademark by way of packaging and sale of the Offending Product in the circumstances aforestated, will result in the general public being confused as to the origin of the Defendant's product and/or cause the public to believe that there is a connection between the Defendant's product and the Plaintiff's, which is, in fact, not the case. Thus, the Plaintiff is apprehensive that the continued unlawful use and misrepresentation of its trademark by the Defendant will cause it irreparable harm; hence its prayer for temporary injunction, pending the hearing and determination of this suit.

[13]  In the premises, and on the basis of the Plaintiff's uncontroverted evidence, the Court is satisfied, on a prima facie basis, in line with the holding in Supa Brite Ltd vs Pakad Enterprises Ltd [2001] 2 EA 563, that:

[a] The Plaintiff has acquired a reputation or good will connected with its water/non alcoholic products distributed under and known to buyers by the distinctive "Uhai"get-up or feature;

[b] That the Defendant has made misrepresentations to the public leading them to believe that its Uhai Premium Drinking    Water products are the Plaintiff's.

[c] That the infringement aforementioned has occasioned, and continues to occasion, the Plaintiff damage because of the   erroneous belief engendered by the Defendant's misrepresentation;

[14] As to whether the Plaintiff stands to suffer irreparable harm, the case of Nguruman Limited vs. Jan Bonde Nielsen & 2 Others [2014] eKLR is instructive. The Court of Appeal stated as follows:

"On the second factor, that the applicant must establish that he "might otherwise" suffer irreparable injury which cannot be adequately remedied by damages in the absence of an injunction, is a threshold requirement and the burden is on the applicant to demonstrate, prima facie, the nature and extent of the injury...there must be more than an unfounded fear or apprehension on the part of the applicant. The equitable  remedy of temporary injunction is issued solely to prevent grave and irreparable injury; that is injury that is actual, substantial and demonstrable; injury that cannot "adequately"  be compensated by an award of damages. An injury is irreparable where there is no standard by which their amount can be measured with reasonable accuracy or the injury or harm is such a nature that monetary compensation, of  whatever amount, will never be adequate remedy."

[15] The Plaintiff has shown that it has a prima facie case; and further that this is a matter involving goodwill and passing off. It is also entirely unopposed. Accordingly, there is sound basis for the Court to hold that the Plaintiff stands to suffer irreparable injury for which there is no standard by which the amount can be measured with reasonable accuracy, and injury of such a nature that monetary compensation, of whatever amount, would never be adequate remedy. Indeed, the balance of convenience is also in favour of the Plaintiff in the circumstances.

[16]  The foregoing being my view of the matter, I would allow the Plaintiff's application dated 31 August 2016 and grant the following Orders:

[a] That the Defendant, whether by itself, directors, agents, servants, employees, successors and/or assigns or any persons  acting under their direction or instructions or otherwise howsoever or any of them be and is hereby restrained by an Order of Temporary Injunction  from manufacturing, packaging, advertising, promoting, selling and/or offering for sale, distributing, displaying or otherwise using or dealing with the product Uhai Premium Drinking Waterin its present packaging, labelling and get up which singly and/or in combination infringe the Plaintiff's "Uhai" trademark pending the inter partes hearing and determination of  the suit;

[b] That the Defendant, whether by itself, directors, agents, servants, employees, successors and/or assigns or any persons acting under their direction or instructions or otherwise howsoever  or any of them be and is hereby restrained by an Order of  Temporary Injunction from manufacturing, packaging, advertising, promoting, selling and/or offering for sale, distributing, displaying or otherwise using or dealing with the product Uhai Premium Drinking Waterin its present packaging, labelling and get-up which singly and/or in combination pass off the Defendants Uhai Premium Drinking Water as sourced from or associated with the Plaintiff's "Uhai" trademark pending the inter partes hearing and  determination of the suit.

[c] That the costs of the application be borne by the Defendants  in  any event.

It is so ordered.

SIGNED, DATED AND DELIVERED  AT NAIROBI THIS 3RDDAY OF NOVEMBER, 2017.

OLGA SEWE

JUDGE