[2019] KEHC 11821 (KLR)

REPUBLIC OF KENYA

IN THE HIGH COURT OF KENYA AT NAIROBI

COMMERCIAL AND ADMIRALTY DIVISION

CIVIL SUIT NO. 588 OF 2014

SAFEPAK LIMITED...................................................................PLAINTIFF

VERSUS

GENERAL PLASTIC LIMITED............................................DEFENDANT

JUDGMENT

1. The plaintiff’s case herein is undefended.

2. Safepak Limited, the plaintiff, is the registered proprietor of industrial design No 666 (the design). The plaintiff is in the business of designing, manufacturing and selling containers and/or bottles in Kenya since 1991. The design, as required under section 47 (8) of the Industrial Property Regulations 2002, is described in a statement of novelty as:

“Lies in the honey comb pattern applied on the shoulder of the container in the context of a container having such a shape and configuration.”

3. The plaintiffs sales and administration manager, Catherine Wangari Karanja, stated in evidence that the plaintiff’s protection in respect of the design’s features and shape relates to the individual novel feature covered by the statement of Novelty filed at the Kenya Industrial Property Institute (KIPI) on 20th September 2011, together with the application to register the design. That the plaintiff has expended significant intellectual and monetary effort in coming up with the unique features of the design.

4. It is the plaintiff’s case that the defendant infringed its registered design by manufacturing for sale a bottle that incorporates a feature protected by the plaintiff’s design. That the defendant’s infringing bottle embodied substantially similar features as “the honey comb pattern applied on the shoulders of the container.” That the overall shape of the defendant’s infringing bottle is not substantially different from the plaintiff’s registered design.

ANALYSIS

5. As stated before this is an undefended action. The defendant does not deny, therefore, the infringement of the plaintiff’s bottle. I have examined the plaintiff’s industrial design, which is on page 3 of the plaintiff’s exhibits. I have also examined the defendant’s infringing bottle, at page 4 of the plaintiff’s documents. I can confirm that the defendant’s infringing bottle embodies substantially similar features to the plaintiff’s bottle. The infringement is to the specific features of the honey comb pattern applied on the shoulders of the bottle. The defendant’s bottle has the shape and configuration which is protected by the plaintiff’s design registration No. 666. The defendant’s production of the bottle that incorporates the features protected by the plaintiff’s design is contrary to the provisions of section 105 of the Industrial Property Act. That section provides:

“Subject to sections 21(3)(e), 58, 61(6), 72, 73, 80(1C) and 86, any act specified in section 54 or 92 and performed by a person other than the owner of the patent or of the registered utility model or industrial design without the owner’s authorization, in relation to a product or a process falling within the scope of a validly granted patent or certificate of registration shall constitute an infringement.”

6. The plaintiff has proved, on the required standard, that it is the bona fide registered owner of the design. The plaintiff produced its certificate of registration of that design which was issued by Kenya Industrial Property Institute. That registration confers on the plaintiffs the rights set out in section 92 (1) of the Industrial Property Act. That section provides:

“(1)Registration of an industrial design shall confer upon its registered owner the right to preclude third parties from performing any of the following registration acts in Kenya —

(a) reproducing the industrial design in the manufacture of a product;

(b) importing, offering for sale and selling a product reproducing the protected industrial design; or

(c) stocking of such a product for the purposes of offering it for sale or selling it.”

7. In view of the above finding the plaintiff is entitled to orders it seeks of injunction. The plaintiff did not give evidence on its claim for inquiry as to damages or for account of profit made by the defendant as a result of the infringement. The court will treat that prayer as abandoned.

8. The plaintiff has substantially succeeded in its claim and it is entitled to the costs of the suit.

CONCLUSION

9. Judgment is hereby entered for the plaintiff as follows:

(a) A permanent injunction is hereby issued restraining the defendant whether by itself, its directors, officers, employees servants or agents or otherwise howsoever from infringing on the plaintiff’s industrial design No 666 described in the novelty statement as “the honey comb pattern applied on the shoulders of the container in the context of a container having such a shape and configuration features contained in the plaintiff’s Industrial Design No. 666.

(b) A permanent injunction is hereby issued restraining the defendant whether by itself, it directors, officers, employees, servants or agents or otherwise howsoever from infringing on the plaintiff’s protected design No. 666 whether by manufacturing, importing, distributing, selling or offering for sale any bottles or other similar products substantially similar to the plaintiff’s Industrial Design No. 666.

(c) An order is hereby issued for:

(i) The delivery to the plaintiff of, or destruction on oath, of all moulds and infringing products and of all bottles or other products within the defendants’ possession, custody or power which are manufactured as a result of an infringement of the Plaintiff’s Design No. 666 and would otherwise offend the provisions of the foregoing injunction;

(ii) The delivery of all documents relating to the manufacture, importation, purchase, distribution, selling or offering for sale of all products falling within the provisions of paragraph (a) and (b) above.

(d) An order is hereby issued requiring the defendant to disclose the names and addresses of all those by whom it has been supplied and to whom it has been supplied goods falling within the provisions of paragraph (a) and (b) above.

(e) The plaintiff is awarded costs of the suit.

DATED, SIGNED and DELIVERED at NAIROBI this17th dayof October,2019.

MARY KASANGO

JUDGE

Judgment read in open court in the presence of

Sophie .................................................................Court clerk.

.............................................................................FOR THE PLAINTIFF

.............................................................................FOR THE DEFENDANT