[2021] KECA 599 (KLR)

IN THE COURT OF APPEAL

AT NAIROBI

(CORAM: OUKO, (P) ASIKE-MAKHANDIA & KANTAI, JJA)

CIVIL APPLICATION NO. NAI 378 OF 2018

BETWEEN

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

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

AND

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

(Being an application for injunction pending the lodging, hearing and determination of

an appeal from the decision of the HighCourt of Kenya at Nairobi in Milimani

by Hon. Mr. Justice J.A. Makau dated 25thOctober, 2018)

In

HIGH COURT CIVIL CASE NO. 501 OF 2019)

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RULING OF THE COURT

The application before us has been brought under Sections 3A & 3D of the Appellete Jurisdiction Act and Rule 5(2) (b) of the Court of Appeal Rules seeking for several prayers but in the main seeks an injunction pending the hearing and determination of an intended appeal from the decision delivered byJustice J.A. Makauon 25th October 2018.

The brief background to this application is that the trial court had dismissed the applicant's application seeking an injunction pending the hearing and determination of the suit. The applicant alleged in that suit that the respondent was passing off its school shoes branded “shupavu” as those of the applicant branded “Toughees” on account of the similarities in shape, design , features and general appearance.

The trial court in its ruling whilst dismissing the application held that the applicant could not suffer any irreparable injury as it could be compensated by an award of damages. In addition, the court found that the balance of convenience was not in favour of the applicant since it was guilty of indolence and laches for waiting for over 4 years to challenge the respondent’s actions, and resultantly, the applicant had failed to meet the threshold for the grant of the injunction sought.

The applicant being aggrieved by the ruling, filed a notice of appeal and at the same time lodged the instant application. The motion is anchored on the grounds set out on its face and the supporting affidavit of Prisca Chege sworn on 20th December 2018. The applicant accuses the trial court for finding that there was a prima facie case of passing off by the Respondent but left the applicant without a remedy for the continued passing off; holding that the applicants will not suffer irreparable damages as a result of the respondents continued manufacturing of “Shupavu” Shoes; failing to note that the applicant became aware of the respondents conduct in January 2017 and lastly that failure to grant the order of an injunction will render the intended appeal nugatory due to the continued and unchecked erosion of its goodwill by the respondent and that the said prejudice and substantial loss cannot be compensated by way of damages.

The application is opposed by the respondent vide the replying affidavit of Jinal Shan (Shah?)sworn on 26th March 2019. It is the respondent's contention that it started producing “Shupavu” shoes way back in 2014 when there was no similar footwear in the world with similar trade name and started selling them in 2015. That the applicants have never sold any product by the name “Shupavu.” The respondent urges further that the appeal is not arguable since, the features of the “Toughees” shoes are not registered under the Industrial Property Act hence not protected, the validity period of almost 15 years granted under the Industrial Property Act has since lapsed; and that there existed similar brand of shoes in Kenya manufactured by different companies for instance C & P shoes Industries.

On the nugatory aspect, the Respondent takes the view that the applicant’s appeal will not be rendered nugatory in the event that the order sought is not granted as both the applicant's and respondents’ shoes have been co-existing in the market from 2015 without any injury to the applicant.

The parties filed written submissions in which they raised weighty issues and cited several authorities which we have duly considered.

The application is predicated upon Rule 5(2) (b) of the Court of Appeal Rules. It is trite that the jurisdiction of this court under this rule is original and discretionary. In the case of Stanley Kangethe Kinyanjui Vs. Tony Keter & 5 others [2013] eKLR,this court laid down the key principles for grant of orders sought as follows; for the applicant to succeed he has an obligation to prove that he has an arguable appeal and upon satisfying that principle, the applicant also has the additional duty to demonstrate that the appeal if successful would be rendered nugatory should the order sought not be granted. In Trust Bank Limited & another vs. Investech Bank Limited & 3 others, Civil Application No. 258 of 1999(unreported)this court held that

“Jurisdiction of the court under Rule 5(2) (b) is original and discretionary and it is trite law that to succeed, an applicant has to show firstly that his appeal or intended appeal is arguable, to put another way, it is not frivolous and secondly that unless he is granted a stay, the appeal or intended appeal if successful will be rendered nugatory”

With regard to the arguability of the appeal, the applicant has annexed a draft memorandum of appeal in which it raises five grounds among them that the trial court erred in law by finding that there was a prima facie case of passing off by the respondents and leaving it without a remedy; that having reached afinding that the respondents “SHUPAVU” shoes are being passed off as the applicants “Toughees” Shoes, the trial court erred in holding that the applicants will not suffer irreparable damage as a result of the respondent’s continued manufacturing of “SHUPAVU” shoes, by holding that the balance of convenience shifted in favour of the respondent and that the applicants were indolent, in failing to institute the suit. We are persuaded that these grounds are not idle but arguable.

On the nugatory aspect, the applicant submits that failure to grant the order sought will allow the respondent to continue producing the shoes to its detriment and that there will be confusion in the market.

In opposition the respondent is categorical that it has been producing the said shoes from 2015 and both products have been in the market without any aspect detrimental to the applicants and that notwithstanding, there have been other parties in the market manufacturing similar shoes thus an order of injunction would not be of any benefit and or use to the applicant.

On the basis of the foregoing we are satisfied just like the trial held that theApplicants will not suffer irreparable injury that cannot be compensated by an award of damages payable by the respondent.We note further that the applicant has not demonstrated the extent of the damage it had suffered since the respondent started producing the shoe brand alongside it’s own and furtherthe damage they might suffer if the orders are not granted. It is not a mere mention of a loss or a mere apprehension of a loss but rather the actual aspect that is real that would render the appeal nugatory if an order is not issued. The conclusion we have come to is that the intended appeal will not be rendered nugatory if the application is denied.

For these reasons, the application fails and is accordingly dismissed with costs to the respondent.

DATED AND DELIVERED AT NAIROBI THIS 7TH DAY OF MAY, 2021.

W. OUKO, (P)

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JUDGE OF APPEAL

ASIKE- MAKHANDIA

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JUDGE OF APPEAL

S. ole KANTAI

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JUDGE OF APPEAL

I certify that this is a truecopy of the original.

Signed

DEPUTY REGISTRAR