[2017] KEHC 9978 (KLR)

REPUBLIC OF KENYA

IN THE HIGH COURT OF KENYA AT NAIROBI

COMMERCIAL AND TAX DIVISION

CIVIL SUIT NO. 498 OF 2016

MARIE STOPES KENYA.........................................PLAINTIFF

VERSUS

DR. OMONDI KUMBA.........................................DEFENDANT

RULING

1. The application before me is for an interlocutory injunction to restrain the defendant from transacting with the trade names “MARI STOPS” and “MARIE STOPES”,and from using a get up and branding that was similar to the plaintiff’s international brand.

2. The plaintiff, MARIE STOPES KENYA LIMITED, is the registered proprietor of the trade mark “MARIE STOPES”. The said trade mark is registered as No. 58970, in Class 44,which is in respect of Medical Services.

3. The plaintiff has a logo which is part of its duly registered trade mark; and the said logo is in the“sky blue? colour.

4. It is common ground that the plaintiff operates several gynecology clinics in Kenya. The said clinics specialize in offering sexual reproduction health services and family planning.

5. It is further common ground that one of the plaintiff’s said clinics is located at KENCOM HOUSE, Moi Avenue, Nairobi.

6. The defendant, DR. OMONDI KUMBA, is a qualified medical doctor.

7. At some point in time, the defendant was employed by the plaintiff, as a doctor.

8. However, the defendant has since stopped working for the plaintiff, and he has opened his own clinic. The said clinic is located at KENCOM HOUSE.

9. It is the plaintiff’s case that the defendant has used the names “MARI STOPS" and “MARIE STOPES", coupled with the plaintiff’s corporate colours.

10. The said usage is said to constitute both an infringement of the plaintiff’s trade mark, as well as the passing-off of by the defendant that his practice was that of the plaintiff.

11. The nett effect of the defendant’s actions is said to be the drastic reduction of the plaintiff’s clientele, which has thereby threatened the plaintiff’s financial base.

12. In support of its claim, the plaintiff filed an affidavit sworn by DENNIS RADAK, its Director for People and Development. He exhibited a receipt No. 5588, in the name of HARRIET MBUI.

13. The said receipt has the particulars of the defendant printed on it. But it also has the imprint of the plaintiff’s stamp.

14. The use of the imprint of the plaintiff’s stamp on the defendant’s receipt suggests a nexus between the plaintiff and the defendant.

15. As the plaintiff insists that it had never authorized the defendant to use either its trade mark or its logo, the unauthorized usage of the said trade mark or logo would constitute an infringement of trade mark, and passing-off, respectively.

16. In answer to the application, the defendant denies having ever infringed the plaintiff’s trade mark. The defendant also denies ever having passed-off his medical practice as that of the plaintiff.

17. The defendant prides himself in being a fully qualified doctor, who had earned the reputation of an experienced Obstetrician and Gynecologist.

18. In the circumstances, he did not need to do any of the things attributed to him by the plaintiff.

19. Although the defendant admits starting his own clinic within Kencom House, he explained that;

a. The name on his door was his, and not that of the plaintiff;

b. The door was painted in White, unlike the plaintiff’s door which is Blue;

c. His clinic is based on Wing ‘B’ whilst the plaintiff’s clinic is based on Wing ‘A’.

20. In my considered opinion, the plaintiff cannot be said to be trying to stop the defendant from carrying on the practice of medicine at Kencom House.

21. The plaintiff’s complaint is that the defendant sought to derive an advantage by riding on the goodwill attaching to the plaintiff’s trade mark and logo.

22. Ms DIANA WAMBUI IRUNGU has signed a Witness Statement, detailing how she had been referred to the MARIE STOPES CLINIC at Kencom House. The referral led her to the defendant’s clinic, where she noted the following words, on a blue door;

“Mari Stops Gynecologists”.

23. Secondly, whilst she was being attended to, Ms Irungu noticed that the “Menstrual Cycle Chart” which the lady attendant was making reference to, within the defendant’s clinic, was branded “Marie Stopes”.

24. After being provided with the necessary consultation, Ms Wambui Irungu was issued with the receipt which had the name of the defendant, and also had the stamp bearing the plaintiff’s trade mark.

25. In the light of that evidence, I find, on a prima facie basis, that the defendant did use the plaintiff’s trade mark at his clinic. The same was on the Menstural Cycle Chart and was also stamped on the receipt issued at the defendant’s clinic.

26. Accordingly, the plaintiff has established a prima facie case with a probability of success.

27. Secondly, I find that the nature of the services offered by both parties is of a delicate and sensitive kind. Medical practice is highly dependent on the qualification, reputation and experience of the personnel providing the service.

28. In the event that anything were to go wrong, the person who is said to have done it would find it difficult to regain his/her reputation.

29. Therefore, not only because the Trade Marks Act provides the proprietor of a trade mark with the right to the exclusive use of the said mark, but more so because the probable damage to reputation, (with attendant consequences)was so difficult to adequately compensate, I hold the considered view that justice demands that no person ought to be permitted to derive benefit or advantage from the name and reputation of another doctor, or any other professional.

30. In the circumstances, I do grant to the plaintiff an Interlocutory Injunction which will restrain the defendant from using the plaintiff’s trade mark “Marie Stopes” or any other adaptation from the said name.

31. The defendant is also restrained from using materials branded with the plaintiff’s trade mark.

32. Thirdly, the defendant is restrained from passing-off his practice as that of the plaintiff.

33. These orders shall remain in place until the suit was heard and determined.

34. The defendant shall pay to the plaintiff, the costs of the application dated 10th December 2016.

DATED, SIGNED and DELIVERED at NAIROBI this18th dayof July2017.

FRED A. OCHIENG

JUDGE

Ruling read in open court in the presence of

Gitonga for Onyonyi for the Plaintiff

Wandetto for Ndegwa for the Defendant

Collins Odhiambo – Court clerk.