[2023] KEHC 26313 (KLR)

Republic v Royal Mabati Factory Limited & 2 others (Criminal Appeal 69 of 2019) [2023] KEHC 26313 (KLR) (8 December 2023) (Judgment)

Neutral citation: [2023] KEHC 26313 (KLR)

Republic of Kenya

In the High Court at Kajiado

Criminal Appeal 69 of 2019

DR Kavedza, J

December 8, 2023

Between

Republic

Appellant

and

Royal Mabati Factory Limited

1st Respondent

Moses Ikinya Kanarua

2nd Respondent

Rose Peninah Mwangi

3rd Respondent

Judgment

1. The 3 appellants persons are jointly charged of the offence of trade counterfeit goods contrary to section 32(a) as read with section 35(1) of the anti-counterfeit Act 2008 No. 13 of Laws of Kenya. The 2nd respondent was also charged with the offence of selling in the course of trade counterfeit goods contrary to section 32(c) as read with section 35 (1) of the anti-counterfeit Act 2008 No. 13 of Laws of Kenya. The 3rd appellant was individually charged with the offence of distributing in the course of trade counterfeit goods contrary to section 32(e) as read with section 35(1) of the Anti- Counterfeit Act 2008 No. 13 of Laws of Kenya and willfully obstructing an inspector in the discharge of his duties contrary to section 24(1) (a) as read with section 35 (2) of the Anti-Counterfeit Act 2008 No. 13 of Laws of Kenya. After a full trial, they were all acquitted for the offences charged. Being aggrieved, the state filed an appeal against the said acquittal.

2. In their petition of appeal, they raised 7 grounds which have been coalized as follows. They argued that the trial court was in errored in failing to comply with the mandatory provisions of section 200 (3) and 211 (1) of the CPC. In addition, the court erred in allowing the respondents to produce exhibits while giving unsworn evidence. That the trial court considered irrelevant facts in acquitting the respondents.

3. As this is the Appellant’s first appeal, the role of this appellate court of first instance is well settled. It was held in the case of Okeno vs. Republic [1972] EA 32 and further in the Court of Appeal case of Mark Oruri Mose vs. R [2013] e-KLR that this court is duty-bound to revisit the evidence tendered before the trial court afresh, evaluate it, analyze it and come to its own independent conclusion on the matter but always bearing in mind that the trial court had the advantage of observing the demeanour of the witnesses and hearing them give evidence and give allowance for that.

4. The Prosecution called 10 witnesses in support of their case. In August 2015, PWI Isaak Oyugi Otieno, the Security Manager at Mabati Rolling Mills, observed the name "Versatile" on a banner near Royal Mabati Kitengela. Concerned about potential trademark infringement, he conducted a test purchase. Subsequently, Sanitosh Shiridhara, a Director at Mabati Rolling Mills, filed a complaint with the Anti-Counterfeit Agency, dated 20/8/2015. The disputed trademark, "VERSA" TILE (Trade Mark No. 57008), registered on 9/3/2005, was described in yellow on a white background. It's noted that registration doesn't exclusively grant the right to use the word "tile" separately.

5. During the trial, it was confirmed that the test purchase tiles lacked the word "Versatile," although receipts and brochures contained the term. Samples of iron sheets were tested by PW2 Lilian Anyango Ogutu and PW 5 Gabriel Waiganjo from the Kenya Bureau of Standards, who collected samples from a suspected counterfeit authority in Embakasi. PW6 Ben Ochieng Aluoch analysed the samples on 14/12/2015, revealing a counterfeit product. However, he couldn't classify it due to the absence of markings. PW7 Benard Oduor Ojunga, a Quality Assurance Technician at Mabati Royal Mills, reported that the tested iron sheets passed except for missing batch markings, crucial for product differentiation. Importantly, he clarified in cross-examination that the term "Versatile" was not present on the tested product.

6. PW8, CPL Jenipher Sirwa, a Scenes of Crime Officer in Nairobi County, testified that she photographed the iron sheet exhibits at the Walls Direct Warehouse in Kiangombe, Nairobi. These exhibits, located in stall 37, were shown to her by Mr. Thomas Odek, the Security Officer. The photos were presented in court as Exhibit 29-34, and she prepared a counterfeit under section 106 of the Evidence Act.

7. PW9, Thomas Joseph Ramogi Odek from the Anti-Counterfeit Agency, detailed his involvement in investigating a case of counterfeit Versatile iron sheets. On 27/8/2016, he, along with PW1 Isaac Yugi, met at Kitengela police station and proceeded to Royal Mabati factory. They discovered versatile iron sheets resembling those of Mabati Royal Mills, seized the goods, and Penina signed the inventory. The seized goods were produced as Exhibit 45.

8. PW10, Dr. Abraham Mugambi, Deputy DCIO at Dagoreti Division, testified that in 2015, he was seconded to the Anti-Counterfeit Agency. Accompanying PW9, they investigated a complaint by Mabati Royal Mills against a Kitengela company trading their products. They seized iron sheets at Royal Mabati Ltd, and Mwaura locked the rear door with a key found in his pocket.

9. DCIO Moses Ikinya Kangarua, the Director of Royal Mabati and the first accused, refuted the allegations, stating they don't infringe on trademarks and their products are distinct. He argued that "Versatile" is a common English word denoting adaptability and durability, disclaimed in their trademark "Royal Versatile." He claimed other companies also use the term, and the complainant's trademarks were not on the seized goods.

10. DW2, Rose Peninah Mwangi, an employee of Royal Mabati, countered the prosecution's narrative, claiming she allowed the inspectors into the factory premises, where they conducted inspections. She denied collusion in closing the door, stating that her former colleague, PW10, found the keys in his pocket.

Analysis and determination. 11. In their written submissions, the appellants maintained that there was no compliance with section 200 (3) and section 211 (1) of the CPC which are mandatory provisions. Section 211 of the Criminal Procedure Code (CPC) provides that a court will put an accused on his defence when a case is made out against him; that in this case there was sufficient evidence adduced by the prosecution to put the accused persons on his defence. It is upon the trial court to make that determination. On the other hand, Section 200 (3) of the Criminal Procedure Code (CPC) provides that where a succeeding magistrate commences the hearing of proceedings and part of the evidence has been recorded by his predecessor, the accused person may demand that any witness be re-summoned and reheard and the succeeding magistrate shall inform the accused person of that right.

12. This section is there to protect accused persons during criminal trials. I see no reason why the appellants are raising the issue that it was not complied with in this case. The ground therefore fails.

13. The appellant also argued that unsworn evidence was admitted into evidence in addition to the production of defence exhibits. The law relating to unsworn statements is well expressed by Emukule, J in the case of Mercy Kajuju & 4 Others v Republic [2009] eKLR where he stated as follows:“I also discussed at some length the nature and value of unsworn statement, and on authorities held that unsworn statements have no probative or evidential value unsworn statements are not in evidential sense, facts which either go prove or disprove a point alleged by one party and disputed by another. Facts in issue must be proved and unsworn statements are inappropriate subject of evidence....”

14. That unsworn statement is not, strictly speaking evidence and the rules of evidence, cannot be applied to unsworn statement. It has no probative value, but it should be considered in relation to the whole of the evidence. Its potential is persuasive rather than evidential. For it to have value it must be supported by evidence recorded in the case. I have re analysed the entire record and noted that the respondents elected to give unsworn evidence. Consequently, the court formed an opinion based on the evidence against the entire evidence on record. The ground therefore fails.

15. The appellant also challenged the respondent’s acquittal in totality. It is trite that the burden of proof in criminal cases is always on the prosecution to prove the elements of an offence which an accused is charged with. The standard of proof is always that of beyond reasonable doubt. This is provided under section 107 of the Evidence Act Cap 80 Laws of Kenya.

16. In this case, the appellant was convicted for the offence of being in possession of counterfeit goods contrary to Section 32 (a) as read with Section 35 (1) (a) of the Anti-Counterfeit Act No. 13 of 2008. The purpose of the Anti-Counterfeit Act No.13 of 2008 is to prohibit trade in counterfeit goods. Section 32(a) provides for the offence the appellant had been charged with. It provides that;“It shall be an offence for any person to-(a)have in his possession or control in the course of trade any counterfeit goods.”

17. To sustain a conviction, the prosecution needed to prove, beyond reasonable doubt, three elements: -a.That the appellant was in possession;b.of counterfeit goods;c.in the course of trade.

18. The question which then needs to be answered is whether the prosecution tendered sufficient evidence to prove all the above elements. As to whether the respondents were in possession, from the appellant’s evidence that The complaint against the accused persons in this case revolves around the alleged infringement of the trademark "VERSA" TILE (Trade Mark No. 57008), registered on 9/3/2005, by using the term "Versatile." Following a test purchase prompted by suspicions, a complaint was officially filed by Sanitosh Shiridhara, a Director at Mabati Rolling Mills, with the Anti-Counterfeit Agency.

19. During the trial, it was confirmed that the sample iron sheets when tested lacked the inscription "Versatile," but the receipts and brochures contained it. The focus of the case includes the absence of the said inscription on the tested iron sheets, and the disputed use of the trademark. The prosecution presented various witnesses, including those from the Kenya Bureau of Standards, who conducted tests on the iron sheet samples. Notably, the Quality Assurance Technician at Mabati Royal Mills, PW7 Benard Oduor Ojunga, emphasized that the missing inscription on the batch is a crucial factor for product differentiation.

20. As to whether the said goods were counterfeit, Section 2 of the Act defines “Counterfeit goods” as;“goods that are the result of counterfeiting any item that bears an intellectual property right, and includes any means used for purposes of counterfeiting.”“Counterfeiting” is defined as;“taking the following actions without the authority of the owner of intellectual property right subsisting in Kenya or outside Kenya in respect of protected goods—a.the manufacture, production, packaging, re-packaging, labelling, or making, whether in Kenya, of any goods whereby those protected goods are imitated in such manner and to such a degree that those other goods are identical or substantially similar copies of the protected goods..”

21. As such, the prosecution had a burden to prove that the goods in question were a result of counterfeiting any of the items that bears an intellectual property right. To do so, the prosecution was required to tender sufficient evidence that the iron sheets were manufactured, produced, packaged, re-packaged, labelled, or made in imitation of protected goods in such a manner and to such a degree that those other goods are identical or substantially similar copies of the protected goods. The prosecution further had a duty to tender evidence to the effect that all that was done without the authority of the owner of intellectual property rights subsisting in Kenya or outside Kenya in respect of protected goods.

22. The central question is whether the presented evidence aligns with the charges. The respondents faced allegations of possessing, selling, and distributing counterfeit goods. Notably, the goods discovered at the respondent’s location meet KEBS standards. It's crucial to acknowledge that both the complainant and respondents operate businesses of manufacturing iron sheets.

23. From the record, there was no evidence adduced by an expert at Kenya Industrial Property Institute (KIPI) to confirm whether the complainant held any intellectual property rights over the goods in issue. It my considered view, that the trial court was right in its finding that the complainant lacked intellectual property claims on these specific goods. Further, the complainant did not provide evidence to show that he held intellectual property rights over the goods. This is mainly because the exhibits lacked any inscription of the complainant's name or trademark.

24. The learned trial magistrate succeeded in thoroughly interrogating the evidence produced by the prosecution and came to the right conclusion that the prosecution had not proved the charge preferred against the respondents beyond reasonable doubt.

25. Having found that the goods in issue were not counterfeit, the charges in counts II and III against the 2nd and 3rd respondents automatically fail.

26. In addition, the prosecution failed to produce sufficient evidence to sustain the charge against the third respondent that he willfully obstructed an inspector in the discharge of his duties contrary to section 24(1) (a) as read with section 35 (2) of the Anti-Counterfeit Act 2008 No. 13 of Laws of Kenya.

27. For the foregoing reasons, I find that the respondents were properly acquitted. Consequently, I find that this appeal lacks merit and is consequently dismissed.

JUDGEMENT DATED AND DELIVERED VIRTUALLY THIS 8TH DAY DECEMBER 2023D. KAVEDZAJUDGEIn the presence of:Nyaroita for the StateWaiganjo for the RespondentMateli C/A