[2022] KEIPT 863 (KLR)

Kenrub Limited v Metro-Poly Kenya Limited (IPT Case 98 of 2021) [2022] KEIPT 863 (KLR) (Civ) (31 August 2022) (Judgment)

Neutral citation: [2022] KEIPT 863 (KLR)

Republic of Kenya

In the Industrial Property Tribunal

Civil

IPT Case 98 of 2021

Brown Kairaria, Chair, Pauline Muhanda & Frasia Wangari, Members

August 31, 2022

Between

Kenrub Limited

Applicant

and

Metro-Poly Kenya Limited

Respondent

Judgment

Introduction 1. Kenrub Limited [the requester] by its request dated June 29, 2021 and filed at the tribunal on even date seeks;a.A temporary injunction restraining the respondent whether by itself, its directors, officers, employees, servants, agents, successors and/or assigns from infringing the requester’s industrial design no 1090 and from manufacturing and trading in all products that infringe on the requestor’s Industrial design number 1090. b.A permanent injunction restraining the respondent whether, by itself, its directors, officers, employees, servants, agents, successors and/or assigns from infringing the requestor’s industrial design no 1090. c.A mandatory injunction against the respondent to recall from the market, destroy and/or deliver up to the tribunal of all products that infringe on the requestor’s industrial design no 1090 and subsequently confirm upon oath such recall, destruction and/or delivery.d.General damages for infringemente.Costs

2. In response to the request, the respondent on August 31, 2021 filed a reply/counter statement dated August 20, 2021 disputing the claim on the following grounds:a.The respondent’s acts do not infringe the subject industrial designb.The respondent’s wheel is subject to an industrial design application which has received approval from the managing director, affirming its novelty, uniqueness and most notably dissimilarity with the requestor’s industrial design no 1090

3. The parties have filed and rely on the following documents/exhibitsDocumentsa.Request under section 106 filed on June 29, 2021b.Reply/counter statement dated August 31, 2021c.Requestor’s statutory declaration dated October 14, 2021d.Respondent’s statutory declaration dated filed on November 30, 2021e.Requestor’s statutory declaration in reply filed on February 25, 2022f.Requestor’s written submissions filed on April 4, 2022g.Respondent’s submissions filed on April 20, 2022h.Requestor’s submission in reply filed on April 22, 2022

4. The tribunal notes that though the requestor indicated in its pleading that actual physical exhibit of the subject design wheel and the wheel alleged to be infringing industrial design no 1090 would be furnished at the trial, none were actually presented to the Tribunal.

Background 5. The requestor claim is the registered owner of industrial design number 1090 having registered the same on the 12th of October, 2018 being an industrial design applied to a wheel.

6. The characteristics of the wheel is described by both parties as costing of:a.A unitary and solid non-inflatable wheel made of rubber, with rubber spokes built into the structure as protruding rectangular structure from the hub to the inner wheel lying flat on the unitary wheel.b.A disc member extending from the outer surface of the hub portion to the inner surface of the tyre portion so as to join the hub portion and the tyre portionc.A hub portion having a first end and a second end and a hollow cavity for receiving an axle therein, wherein the cavity extends from the first end to the second end of the portion.d.A road engaging tread portion marked by a groove along the circumference of the outer surface of the portion.e.Wherein the wheel assembly is moulded of non-metallic materials so as to form a solid non-inflatable wheel.

7. The requestor states that on or about January 2021 it discovered that the respondent had been manufacturing and offering for sale a wheel that resembles and incorporates the registered designs.

8. The respondent on the other hand through its statutory declaration of Karan Sagar dated October 26, 2021 states that he designed the respondent’s wheel himself differentiating it in appearance as well as in technical capabilities from that of a predecessor company and insist that the two wheels ie the requester’s and respondent’s wheel are starkly different.

9. The respondent outlined what it believed to be the difference between the two wheels and urges the tribunal to find that the two wheels cannot be similar as the requester’s industrial design protection extends only to the overall appearance of a product resulting from one or more visual features of the shape, configuration pattern or ornamentation of a product.

Mode of Hearing 10. By concurrence of the parties this case was canvassed on the basis of the documentation presented as highlighted above.

Issues for Determination 11. Arising from the pleadings, the following issues fall for determination.a.Whether the respondent has infringed on the requestor’s industrial design no 1090b.Whether the requester is entitled to the orders sought in relation to industrial design number 1090c.What reliefs should issue

The Applicable Law 12. The statutory law governing the registration, the revocation and infringement of industrial designs is the Industrial Property Act 2001, in particular, Part Xiii thereof and part XV and XVI, the latter two being shared parts and applying in varying degrees to other categories of industrial/intellectual property rights governed by the act such as patents and utility models. The scheme of industrial design law is to protect anything that gives a special overall visual appearance to a product made by hand, tool or machine, also referred to as products of craft or industry [s 84[1]. Such protection is not extended’ to anything in an industrial design which serves solely to obtain a technical result or to methods or principles of manufacture or construction’’ [S84 [2] as amended by statute law amendment Act 2018]. An industrial design is registrable if it is new [86[1]. And it is new ‘unless it is identical or substantially similar in overall impression to an industrial design that has been disclosed to the public anywhere in the world by publication, or use prior to the filing date of the application or, where applicable, the priority date of the application for registration.’ [s 86[2]’

13. Industrial design rights are acquired upon registration[S92], though the duration of protection invariably precedes the actual date when the certificate of registration is issued, as it is reckoned in reference to the filing date of the application for registration or the priority date where one is claimed in the application for registration. Under section 87 the right is secured by the creator following, registration by the Industrial Property Institute [KIPI] upon application by the creator and examination by competent officers of the institute [87[1]. Where the applicant is not the creator the application should be accompanied by a statement of justifying the applicant’s right to the registration of the industrial design.

14. An application for registration can be challenged through opposition proceedings under s 87 [9]. Once registered the registration can be challenged by an interested person at any time during the life or validity of the design under s 103[1] on any of the grounds set out at s 103[3] and the Tribunal is empowered to revoke or invalidate the design in appropriate cases. The procedure for instituting revocation proceedings is set out in the Act [S 103] and the Industrial Property Tribunal rules 2002 [Part 1V rule 16].

15. The registered owner can bring infringement proceedings under s 106 IPA and rule [20] IPT Rulesagainst a person who commercially exploits or performs any act specified in section 92[1] of the Act without the owner’s consent or authority. But the Act also allows any other person who can demonstrate a legitimate interest in the registered design to request the tribunal to declare that the performance of any specific act does not infringe the industrial design [s 107]. Furthermore, such a person who can prove that the acts performed by him do not constitute infringement may request the tribunal to grant an injunction to prohibit threats of infringement by the registered owner and to award damages for financial loss resulting from the threats. [S.1O8 [1]IPA.

Analysis and Determination 16. Whether the respondent has infringed on the requestor’s industrial design no1090.

17. For the tribunal to determine infringement it must be guided by the definition of an industrial design in Industrial Property Act being the overall appearance of a product resulting from one or more visual features of the shape, configuration, pattern or ornamentation of a product;

18. Further the tribunal must consider whether the industrial design is identical or substantially similar in overall impression to the products, accused to be infringing.

19. For the tribunal to make such a determination, it must be presented with a representation of or the actual registered industrial design that is said to be infringed as well as the accused design in order to draw out the similarities and differences between the registered industrial design and the design accused of infringing. The test is a visual one. As was stated in Procter & Gamble Company Vs Rechitt Benkiser (UK) ltd [2007] EWCA Civ 936 “The most important thing in a case about registered designs are the registered design, the accused design and the prior art.”

20. Whereas both parties have produced in their documentation incorporative clear photographs of the wheels they are currently producing, the requester did not tender a clear representation/diagram of the registered design.

21. The requestor’s exhibit ss-1 is a photocopy of the certificate of registration of the industrial design number 1090 accompanied with a pictorial representations of the registered industrial design but the same are hardly clear for the tribunal to make a comparison between the registered design and the several photographs produced by the requestor in support of the infringement claim.

22. The burden of proof was on the requestor to tender clear images of the industrial design as registered at kenya industrial property institute to enable the tribunal to make a comparison with the respondent’s wheel in order to determine whether they are identical or substantially similar.

23. In the absence of that material evidence the tribunal is unable to find that the requester’s registered design no 1090 has been infringed by the Respondent’s wheel.In the upshot, the infringement claims by the requester contained in the request dated June 29, 2021 have not been proved and are hereby dismissed with costs.

READ AND DELIVERED VIRTUALLY VIA TEAMS ON THE 31ST DAY OF AUGUST, 2022. SIGNED:Brown Kairaria - ChairmanPauline Muhanda - MemberDr. Frasia Wangari - Member