[2018] KEHC 10126 (KLR)

REPUBLIC OF KENYA

IN THE HIGH COURT OF KENYA AT NAIROBI

MILIMANI COMMERCIAL COURTS

COMMERCIAL AND ADMIRALTY DIVISION

CIVIL CASE NO. 314 OF 2016

COLOUR PLANET LIMITED.....................................PLAINTIFF

VERSUS

SAFARICOM LIMITED..................................1ST DEFENDANT

JULIA OBURA.................................................2ND DEFENDANT

KENYA POWER & LIGHTING CO. LTD....3RD DEFENDANT

RULING

1. The 3rd Defendant seeks to exit these Proceedings early and has filed a Notice of Motion dated 20th June 2016 seeking that the suit against it be struck out.

2. The Plaintiff does not oppose the Application but the Co-Defendants (The 1st and 2nd Defendants) resist it. The opposing Defendants assert that the 3rd Defendant is a necessary Party because the Plaintiff’s request for injunction cannot be determined in its absence and secondly the issue of entitlement to “Okoa Stima” as a Trademark cannot be determined at the main hearing without the presence of the 3rd Defendant as a Party. If I uphold any of these arguments, then I must decline the Application. So, is the 3rd Defendant a necessary Party?

3. The dispute herein is about the ownership of a Trademark “Okoa Stima”. In paragraph 8 of the Plaint, the Plaintiff avers:-

8. The Plaintiff avers that the Defendants have infringed the Plaintiff’s trade mark as hereunder:-

a) When the 2nd Defendant through an Article published in the Standard Newspaper on 9th June 2015 claimed ownership of the trade mark Okoa Stima.

b) The 1st Defendant by claiming ownership thereof as an initiative between itself and the 3rd Defendant and to that end has perennially infringed the Plaintiff’s trade mark “Okoa Stima” by running advertisements, marketing the same on diverse platforms and mediums with the sole goal of infringing on the Plaintiff’s right to the exclusive use and control of the Trade Mark and Name Okoa Stima.

4. The Prayers sought by the Plaintiff are as follows:-

a. A Declaration that the Plaintiff has the sole proprietary rights and interests over the Trade Mark Okoa Stima being Trade Mark Number 86795 as lodged and applied for at Kenya Industrial Properties Institute.

b. A declaration that the use of the words Okoa Stima by the Defendants is wrongful and unlawful as it infringes the Plaintiffs Trade Mark Okoa Stima.

c.A temporary Injunction do issue restraining the Defendants whether by themselves, servants and/or agents from using the trade mark Okoa Stima and to cease all and any other activities being carried out under the said name and a name similar to the same pending the hearing and determination of the suit herein.

d. A temporary Injunction do issue restraining the Defendants whether by themselves, servants and/or agents from using the trade mark Okoa Stima and to cease all and any other activities being carried out under the said name and a name similar to the same pending the hearing and determination of the suit herein.

e. A temporary Injunction do issue restraining the Defendants whether by themselves, servants and/or agents to forthwith cease trading, promoting, advertising, marketing, carrying on business and/or any other trade documents of any nature with the said trade mark Okoa Stima or in any way dealing in any other way howsoever with the trademark, Okoa Stima pending the hearing and determination of the suit herein.

f. A permanent injunction do issue restraining the Defendants whether by themselves, servants and/or agents from using the trade mark Okoa Stima and to cease all and any other activities being carried out under the said name from Trading, promoting, advertising, marketing, carrying on business and/or any other trade documents of any nature with the said trade mark Okoa Stima or in any way dealing in any other way howsoever with the trademark and a name similar to the same.

g. General damages for financial loss as assessed by this Honorable Court.

h. Special damages as per paragraph 12 of the plaint.

i. An account of the Defendants income on use of the trade mark Okoa Stima.

j. Costs of this suit.

k. Interest on (g) bad (h) above at commercial rates from the date the cause of action arose till payment in full.

l. Any other relief this Honorable Court may deem just and fit to grant.

5. The Applicant has sought to persuade this Court that it is not a necessary Party because it is a stranger to the alleged claim of ownership of the Trademark “Okoa Stima” by the Plaintiff and as such the claims of Trademark infringement do not lie against it. That there is no Agreement or Contract between the Plaintiff and itself with regard to the development of any Trademark including Okoa Stima for purposes of a credit facility or other related concept. Lastly the Plaintiff makes no specific claims of infringement against the 3rd Defendant.

6. Whilst the Plaintiff does not appear to make any specific allegation of infringement against the 3rd Defendant, one of the prayers sought in the Plaint is an Order of Permanent Injunction restraining the Defendants from using the Trade Mark. So by whom and how is the Trade Mark used? Gleaning from the Plaint is that the concept embodied in the Trade Mark is one of selling tokens on credit for services offered by the 3rd Defendant. For this concept to succeed there would have to be cooperation and participation of both the 1st Defendant and the 3rd Defendant.

7. If the Plaintiff were to succeed in its plea for a Permanent Injunction that Injunction may well be more efficacious if restraint was wide enough to cover the 3rd Defendant. To that extent this Court would be reluctant to let go the 3rd Defendant before the matter is fully tried and the presence or otherwise of the 3rd Defendant is fully understood or appreciated. To the extent that the 3rd Defendant may be bound by the result of these proceedings then it would be a necessary party (See the decision in Amon vs. Raphael Tuck & Sons Ltd [1956], ALL E.R 273 cited to this Court by Counsel for the 1st and 2nd Defendants)

8. But there is something curious about the circumstances here. The Plaintiff is not opposed to the removal of the 3rd Defendant from the proceedings. The action belongs to the Plaintiff and if the Plaintiff takes the position that it can effectively press on with the action without the 3rd Defendant then it is not for the Co-Defendants to insist on their presence, moreso, because there is not cross claim by the 1st and 2nd Defendants against the 3rd Defendant. Put differently, the Plaintiff in not opposing the application must be presumed to have taken the position that whatever remedy it may get against the 1s and 2nd Defendants will be effective and sufficient, the absence of the 3rd Defendant notwithstanding. It is therefore needless to saddle the 3rd Defendant with these proceedings.

9. I allow the Application of 20th June, 2016 with costs. The suit against the 3rd Defendant is struck out with costs to the 3rd Defendant.

Dated, Signed and Delivered in Court at Nairobi this 2nd day of August,2018.

F. TUIYOTT

JUDGE

PRESENT;

Mulovi for Applicant

Wanjohi for Plaintiff

Ogech for Respondent

Kimetto h/b wilson for Plaintiff

Nixon - Court Clerk