[2019] KECA 975 (KLR)

IN THE COURT OF APPEAL

AT NAIROBI

CORAM: (NAMBUYE, J.A ( IN CHAMBERS)

CIVIL APPLICATION NO. NAI. 378 OF 2018 (UR 306/2018)

BATA BRANDS SA..............................................................1STAPPLICANT

BATA SHOE COMPANY (KENYA) LIMITED.............2NDAPPLICANT

AND

UMOJA RUBBER PRODUCTS...........................................RESPONDENT

(An Application for injunction pending appeal pending the lodging, hearing and determination of an appeal from the decision of the High Court of Kenya at Nairobi (J.A. Makau, J.) Dated 25THOctober, 2018

in

H.C.C.C. No. 501 of 2017)

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RULING

On the 25th day of October, 2018, the applicant’s Application to the High Court of Kenya at Nairobi Commercial and Tax Division in Civil Case No. 501 of 2017, was dismissed by J.A. Makau, J. The applicant was aggrieved by that decision and filed a notice of appeal dated 2nd November, 2018 intending to appeal to the Court of Appeal against the entire ruling save for the finding that the applicant had made out a prima facie case under paragraphs 30-35 of the Ruling. It was pursuant to the mentioned notice of appeal that the applicant filed the notice of motion dated and filed on the 20th December, 2018 under a certificate of urgency.

The file was placed before a single Judge (Nambuye, JA) on 3rd January, 2019 for certification of the application as urgent, which request was declined. The applicant being aggrieved, has invoked Rule 47(5) of the Court of Appeal rules 2010, to have the issue of the certificate of urgency canvased inter partes vide its advocate’s letter dated 7th January, 2019. Directions were accordingly given for the parties to appear before the single Judge on 21st January, 2019 at 3. 00pm to canvas the issue of the certificate of urgency inter partes.

Learned counsel Mr. Eddy Owiti, appeared for the applicants, while learned counsel Nyaburi Hiram, appeared for the respondent.

In support of the certificate of urgency, Mr. Eddy Owiti, submits that the applicant is a manufacturer of shoes under the brand name of “Toughees”, while the respondent is also a manufacturer of shoes under the brand name “Shupavu”; that the applicant discovered that the respondent was passing off the applicants brand name of “Toughees” under the guise of its brand name “Shupavu”. The applicant sought an injunction from court to prevent the respondent from continuing to pass off the applicants’ brand name “Toughees” as its brand name “Shupavu”. The High Court in its ruling of 25th October, 2018 made a finding that the respondents’ “Shupavu” branded shoes were in fact a replica of the applicants branded shoes “Toughees”; that the respondent’s action was an intrusion and or infringement of the applicant’s good will over the sale of its branded shoes

Tougheesbut failed to issue an injunction to restrain the respondent from continuing on with that infringement, hence the filing of the application now pending determination under a certificate of urgency. It is therefore Mr. Owiti’s assertion that unless the application pending certification is certified urgent, the respondent will continue infringing on the applicants good will by continuing to pass off its “Shupavu” branded shoes as those of the applicants’ “Toughees” branded shoes; that there is therefore urgency in the pending application.

Mr. Nyaburi Hiramhas opposed the certification of the pending application as urgent. It is his submission that complaint on the sale of shoes is not new as the respondent’s branded shoes have been on sale in the open market since 2014; that it was not until 2017 when the applicant moved to Court to complain; that no explanation was given by the applicants’ indolence. In light of the above conduct on the part of the applicant, counsel has urged me to adopt the position taken by the High Court when it declined to certify the application for injunction as urgent in the first instance, and thereafter declined to grant the injunction in the second instance. It was further Mr. Nyabuti’s submission that the intended appeal is not arguable. There was therefore no justification in the circumstances for me to recall and interfere with the order declining to certify the pending application as urgent.

In reply to the respondent’s submissions. Mr. Owiti has asserted that there was no indolence on that part of the applicant; that the draft memorandum of appeal on record raises triable issues; that the applicant is genuinely aggrieved especially after the Judge found that the respondent has been passing off its “Shupavu” branded shoes as those of the applicants’ “Toughees” branded shoes; but failed to intervene on behalf of the applicant and that the High Court decision is genuinely challenged; that applicant stands to suffer prejudice in the loss of its good will if the application is not certified urgent, while no prejudice will be suffered by the respondent if the application is certified urgent.

Although parties have submitted extensively on the matter, my jurisdiction under rule 47(5) of the Rules of the Court is restrictive. All that is required of me is simply to determine as to whether a case has been made out for me to recall and interfere with my order declining to certify the matter as urgent. It provides as follows:-

“(5) The refusal by the Judge to certify an application as urgent under this rule shall not be subject to a reference to the Court under rule 55, but the applicant may apply informally for the matter to be placed before a single Judge for hearing inter partes.”

I have considered the above restrictive mandate in light of the rival submissions set out above. It is my view that the matters that go to the merits of the pending application do not fall for my consideration when determining the issue as to whether the pending application should be certified urgent or not as doing so,may either preempt or embarrass the outcome of the pending application. Bearing that in mind, it is my finding that there is a concurrent position by both parties that the High Court upheld the applicants’ contention that the respondent in its sale of “Shupavu” branded shoes, it was in effect passing them off as those of the applicants “Toughees” branded shoes; and that therefore the applicant had a prima faciecase. The High Court finding as above notwithstanding, failed to grant a restraining order in favour of the appellant. The applicant is therefore desirous of protecting its good will as recognized by the trial court. I am therefore in the circumstances, satisfied that sufficient basis has been made out for me to recall and interfere with the order of 3rd January, 2019 declining to certify the applicant’s application dated and filed on 20th December, 2018 as urgent. The said order is accordingly set aside and substituted with an order certifying the application as urgent for the reason given above.

Dated and delivered at Nairobi this 25thday of January, 2019.

R. N. NAMBUYE

JUDGE OF APPEAL

I certify that this is a true copy of the original.

DEPUTY REGISTRAR.