https://new.kenyalaw.org/akn/ke/judgment/kehc/2026/9200

Nairobi Beauty World Ltd v Sime Darby Oils Professionals Sdn Bhd (Commercial Appeal E288 of 2024) [2026] KEHC 9200 (KLR) (Commercial and Tax) (25 June 2026) (Ruling) Neutral citation: [2026] KEHC 9200 (KLR) Republic of Kenya In the High Court at Nairobi (Milimani Commercial Courts) Commercial and Tax Commercial Appeal E288 of 2024 PM Mulwa, J June 25, 2026 Between Nairobi Beauty World Limited Applicant and Sime Darby Oils Professionals Sdn Bhd Respondent Ruling 1.This ruling determines two applications brought by the Appellant/Applicant. The first is the Notice of Motion dated 1st October 2024, by which the Applicant seeks to set aside or vary the ruling of the Assistant Registrar of Trade Marks delivered on 9th April 2021. In the alternative, the Applicant prays for an order directing a retrial of the matter before the Assistant Registrar and that all subsequent entries, alterations or amendments to the Register of Trade Marks made pursuant to that ruling be set aside. The second is the Notice of Motion dated 2nd May 2025, which seeks a raft of interlocutory orders: a stay of execution of the Registrar’s ruling of 9th April 2021; an injunction to restrain the Respondent from using or registering any mark deceptively similar to “CBC Pure White Coconut Oil”; and the maintenance of the status quo ante pending the determination of the appeal. 2.The two applications were canvassed together by way of written submissions. The Applicant’s submissions are dated 2nd February 2026, while the Respondent’s submissions are dated 3rd March 2026. I have considered those submissions, the affidavits on record and the annexed materials. I have also carefully read the impugned decision of the Assistant Registrar. Factual background 3.The narrative is largely common ground. The Applicant claims to be the registered proprietor of Trademark No. KE/T/2011/72138 “C.B.C Pure White Coconut Oil” in Class 3 of the Nice Classification, with effect from 8th August 2011, and asserts continuous use of the mark since 2002. The Respondent, on the other hand, claims to be the prior user and lawful proprietor of the “C.B.C BRAND” and, in 2018, successfully applied to the Registrar of Trade Marks for the expungement of the Applicant’s mark from the register. 4.After hearing both parties, the Assistant Registrar delivered a considered ruling on 9th April 2021, finding that the Respondent had established superior rights through prior and continuous use of the “C.B.C BRAND” in Kenya and internationally, that the Applicant’s mark was confusingly similar, and that the Applicant had not proved proprietorship. The Registrar ordered the expungement of the Applicant’s mark and directed the necessary rectifications to the Register. 5.Following that decision, the Respondent’s own mark was duly advertised, registered and a certificate of registration issued. The Applicant made several attempts to challenge the Registrar’s decision before this Court and the Court of Appeal, including applications that were dismissed or struck out. The Respondent has since filed a trademark infringement suit against the Applicant and obtained interim injunctive relief. The First Application 6.The gravamen of the Applicant’s motion of 1st October 2024 is that the Assistant Registrar erred in law and fact, relied on forged documents and ignored evidence of the Applicant’s prior use, and that the expungement was therefore unlawful. 7.I must, at the threshold, determine the legal character of this motion. An application to “set aside or vary” a decision of the Assistant Registrar made under the Trade Marks Act is, in substance, an appeal. The Act provides a comprehensive code for challenging such decisions. Section 52 of the Trade Marks Act, Cap 506, reads:“(1)An appeal shall lie to the High Court from any decision of the Registrar under this Act or the rules made thereunder. (2) Any such appeal shall be brought within sixty days of the date of the decision appealed against: Provided that the High Court may, for sufficient cause, extend the time within which an appeal may be brought.” 8.The decision impugned was delivered on 9th April 2021. The present motion was filed on 1st October 2024, over three and a half years later. No application for extension of time was made prior to or simultaneously with the filing of the motion. The sixty-day statutory window closed on or about 8th June 2021. The motion is plainly incompetent for being lodged grossly out of time without leave. 9.The Court of Appeal in Captain David G. Mwaniki v Kenya Industrial Property Institute & 2 others [2021] eKLR reaffirmed that the sixty-day period prescribed by section 52 is mandatory and that the High Court has no jurisdiction to entertain an appeal filed outside that period unless an extension is granted upon application. There is none here. The motion cannot be salvaged by describing it as an application to “set aside or vary” because the High Court’s original supervisory jurisdiction is ousted where a statutory right of appeal exists and has prescribed time limits. A party who sleeps on his rights cannot later invoke the court’s discretion as of right. 10.Even if I set aside the issue of timing, I find no merit in the application. The court’s role in reviewing an appeal from the Registrar is limited. In Associated Battery Manufacturers (E.A) Ltd v Eveready Batteries East Africa Ltd [1984] KLR 675, the Court of Appeal stated that an appellate court should not easily overturn the Registrar’s factual findings unless they are clearly wrong or lack evidence. 11.After reviewing the Assistant Registrar’s decision, I find it detailed and well-founded. It addressed the applicant’s claim of prior use from 2002, the Respondent’s extensive use of “C.B.C BRAND” since at least 2007, mark similarity, and potential confusion. The Registrar correctly applied legal principles under sections 14, 31, and 35 of the Trade Marks Act, with a conclusion well supported by the record. The claim of forged documents is unsubstantiated and an improper attempt to turn the appeal into a collateral attack on proceedings where the Applicant fully participated. Therefore, the first application fails. The Second Application 12.The motion of 2nd May 2025 seeks a stay of execution of the Registrar’s ruling, an order restraining the Respondent from using or registering any similar mark, and the maintenance of the status quo before 9th April 2021. 13.It is trite law that a stay of execution is an equitable remedy designed to preserve the subject matter of an appeal so that the appeal is not rendered nugatory. However, the appeal having been found incompetent and time-barred, there is no valid appeal upon which a stay can be anchored. A stay cannot exist in a vacuum. As the Court of Appeal stated in Kenya Commercial Bank Ltd v Benjoh Amalgamated Ltd [1998] eKLR, an application for stay presupposes the existence of a competent appeal or an arguable appeal. The dismissal of the first application necessarily sounds the death knell for the second. It is accordingly dismissed on that ground alone. 14.Moreover, even if I were to consider the application for an injunction on its own merits, I would decline to grant it. The principles for the grant of an interlocutory injunction are settled in Giella v Cassman Brown & Co. Ltd [1973] EA 358: - the Applicant must demonstrate a prima facie case with a probability of success, that it stands to suffer irreparable injury not compensable by an award of damages, and if in doubt, the court must decide the matter on a balance of convenience. 15.The Applicant’s case rests on its assertion that it remains the registered proprietor of the trademark. That foundation collapsed on 9th April 2021. The mark has been expunged from the register. The Respondent’s mark has since been registered. There is no existing legal right upon which a prima facie case can be built. An injunction in favour of the Applicant would, in effect, nullify the Registrar’s decision and restore a mark that the competent statutory tribunal has ordered to be removed. That would amount to granting the final relief sought in the appeal at an interlocutory stage, a course this court cannot take. 16.The Court of Appeal in Mrao Ltd v First American Bank of Kenya Ltd & 2 others [2003] KLR 125 emphasized that a prima facie case is more than an arguable case; it must be founded on a right that is being infringed. Here, the Applicant has no subsisting trademark right. 17.On the question of irreparable harm, the Applicant cites loss of goodwill, market confusion and dilution. However, the alleged harm stems from the expungement of its mark; any harm, if any, crystallized upon that determination. An injunction cannot undo the past. Damages would be an adequate remedy should the Applicant ever succeed in reviving its appeal. As for the balance of convenience, it tilts heavily in favour of the Respondent, who is the registered proprietor and has already commenced infringement proceedings. Granting the orders sought would be absurd, as this court would restrain the lawful proprietor of a mark from using it while giving sustenance to an expunged mark, thereby fomenting confusion in the marketplace. 18.The second application also fails as the Applicant has failed to meet the threshold for granting an injunction. 19.Moreover, the Registrar’s decision was made in April 2021. The application for an injunction was filed in May 2025, over four years later. Equity does not aid the indolent. The Applicant’s explanation for this delay is wholly unsatisfactory. 20.For the reasons I have given, I find that both applications are devoid of merit and are dismissed. In the result:1.The Notice of Motion dated 1st October 2024 is dismissed with costs to the Respondent.2.The Notice of Motion dated 2nd May 2025 is dismissed with costs to the Respondent.It is so ordered. RULING DELIVERED VIRTUALLY, DATED AND SIGNED AT NAIROBI THIS 25TH DAY OF JUNE 2026.PETER MULWAJUDGEIn the presence of:Mr. Oburi h/b for Mr. Jura for Appellant/ApplicantMs. Otokoma h/b for Mr. Onyony for RespondentCourt Assistant: Lispa