[2022] KEIPT 861 (KLR)

Zaidat Limited v Fenesi Management Limited & another (IPT Case 86, 88, 89, 90, 91, 92 & 93 of 2020 (Consolidated)) [2022] KEIPT 861 (KLR) (Civ) (31 August 2022) (Judgment)

Neutral citation: [2022] KEIPT 861 (KLR)

Republic of Kenya

In the Industrial Property Tribunal

Civil

IPT Case 86, 88, 89, 90, 91, 92 & 93 of 2020 (Consolidated)

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

August 31, 2022

Between

Zaidat Limited

Applicant

and

Fenesi Management Limited

1st Respondent

Fenesi Limited

2nd Respondent

Judgment

1. This judgment is on seven infringement cases namely IPT Case Numbers 86/2020, 88/2020, 89/2020, 90/2020, 91/2020, 92/2020 and 93/2020 instituted by Zaidat ltd [the requester] against Fenesi Management [1st respondent] and Fenesi ltd [2nd respondent] all brought as requests in Form IPT 16, under section 106 of the Industrial Property Act 2001 and rule 20[1] Industrial Property Tribunal Rules 2002.

2. The infringement cases were initially filed against the 1st respondent Fenesi Management Co. ltd but were amended on March 26, 2021 to join the 2nd respondent Fenesi ltd. On June 16, 2021 the Tribunal with the concurrence of the parties, directed that the cases be consolidated and heard together because they involve the same parties and witnesses, the same or substantially similar documentation, and substantially common questions of law and facts.

3. The cases relate to alleged infringement by the respondents of the requester’s Utility Models 66 [Low-level Carcase System], 76 [Glass door Panels without joints], 83 [Door Frame Assembly], 99 [MDF –Architrave], 102 MDF Room door Joining /flash/Glass Sliding System] 189 [Low-level cabinet Unit and 192 [Modular Kitchen Systems], by fixtures fitted at Fenesi Gardens Apartments.

4. The items accused of infringing the requester’s utility Models are fitted or fixed at Fenesi Gardens Apartments erected on LR No.1870/111/582 situated along School Lane Westlands – Nairobi. The apartments were developed and furnished by Fenesi ltd the 2nd respondent after which the units were sold, transferred to various purchasers under the Sectional Properties Act. The apartments are managed by the Fenesi Management Co. ltd the 1st respondent who also holds the reversionary interest over the Property. The shareholders of the Management Company are the owners of the individual units.

5. All the subject Utility Models were initially registered in the name Navinchandra Lalji Vekaria who assigned all his rights to Zaidat ltd [the requester] in the year 2019 in whose favor certificates of change of ownership were issued by the Managing Director KIPI. Copies of the certificates of registration and change of ownership of the subject utility models have been attached to the statutory declarations of Navinchandra Lalji Vekaria sworn in support of each infringement case and marked as NV2 and NV3 respectively.

IPT Case 86/2020 - The requester/Applicant’s Case 6. IPT Case No. 86/2020 was filed on 12/2/2020 by a Request dated 7th February 2020. It was amended on 26th March 2021 introducing Fenesi ltd the developer as a party to the proceedings otherwise the substance of the case as set out in the Request and statement of facts remained unaltered.

7. Zaidat ltd the requester seeks reliefs against Fenesi Management ltd and Fenesi ltd as follows; ksh.5,700,000 claimed as specific damages for loss suffered as at the date of the request due to the alleged infringement by the respondents, general damages for loss of business, an injunction against the respondents prohibiting continuous infringement and any other relief that the Tribunal deems fit.

8. The case is premised on alleged infringement of Utility Model registration number KE/U/192 titled Modular Kitchen Systems whose certificate of registration was issued on 19th October2017. It was initially registered in the name Navinchandra Lalji Vekaria with a filing date of 3rd June 2016 Vekaria assigned his rights to the requester Zaidat ltd in 2019and a certificate of change of ownership dated 11th April, 2019 was issued by the Managing Director Kenya Industrial Property Institute [KIPI]. The certificate of registration of UM 192 was produced as Exhibit NV2 while the Certificate of Change of Ownership is marked NV3 in the Statutory Declaration of Navinchandra Vekaria sworn on 27th January 2021.

IPT Case 88/2020 - The requester/Applicant’s Case 9. IPT CASE NO. 88/2020 relates to alleged infringement of utility model KE/U/66- Low level Carcase System initially registered in the name Navinchandra Lalji Vekaria with a filing date of January 29, 2013. UM 66 was assigned to Zaidat ltd the requester in 2019 by Vekaria. Both the Certificate of registration and certificate of change of ownership were tendered in evidence attached to the statutory declaration of Vekaria and marked NV2 and NV3. The case was filed on July 8, 2020by a request date July 8, 2020amended on March 26, 2021to join the 2nd respondent and is supported by a statement of facts of even date. In this case Zaidat seeks Ksh. 3500,000 in specific damages for alleged loss suffered as at the date of filing the request. The rest of the reliefs sought are similar to those in IPT CASE 86 of 2020.

IPT CASE 89/2020 - The requester/Applicant’s Case 10. IPT CASE 89/2020 is a claim for alleged infringement of utility model 83- MDF Room Door Frame Joining System with a filing date of January 29, 2013. The initial request is dated July 7, 2020, filed on 8th July, 2020 and amended on March 26, 2021. Zaidat seeks Ksh.1,663,200 in specific damages for alleged infringement with the particulars of loss suffered indicated as Low-level carcase system. The rest of the prayers, in this case, are similar to those in cases 86 and 88.

IPT CASE 90/2020 - The requester/Applicant’s Case 11. IPT Case 90/2020 relates to alleged infringement of utility model 99 –MDF Architrave Special with a filing date of 13th March 2013. The case was initiated by a request dated 7th July 2020 amended on March 26, 2021 in which the requester seeks Ksh. 11,088,800 in alleged specific damages as at the date of the request, general damages, and order of injunction and costs. The Amended request is accompanied by a statement of facts setting out the grounds and facts relied upon in support of the request.

IPT CASE 91/2020 - The requester/Applicant’s Case 12. IPT CASE 91/2020 relates to alleged infringement of Utility Model 102- MDF Room Door Joining System/Glass Sliding System with a filing date of January 29, 2013’. It was initiated by a request dated July 7, 2020 amended on 26th March 2021. It is supported by a statement of facts and seeks prayers similar to those in the other cases in the series save for the specific damages stated as ksh.2,772,000 for loss particularized as Low-Level Carcase System.

IPT Case 92/2020 - The requester/Applicant’s Case 13. IPT CASE 92/2020 seeks ksh1,620,000 specific damages particularized as loss suffered due to alleged infringement of Utility Model 189-Low Level Cabinet carcase unit which has a filing date of 7th December, 2015. In addition, the requester seeks similar prayers as in the other cases in the series. The request, in this case, is dated 7th July 2020 amended on 26th March 2021 and is accompanied by a statement of facts of even dates.

IPT Case 93/2020 - The requester/Applicant’s Case 14. IPT case 93/2020 is a claim for alleged infringement of utility model no, 76 - Glass door Panel joints [with a filing date of December 7, 2015], in which the requester claims ksh540,000 in specific damages in addition to other reliefs similar to those in the other cases in the series.

requester’s Statements of Facts 15. The statement of facts accompanying the separate amended requests are couched in substantially similar terms setting out the grounds and facts relied upon in support of the respective claims with a few differences/ deviations to cater for the specific demands of each case such as the title and description of the utility models.

16. The facts set out in the respective statements of facts can be summarized as follows; The requester [Zaidat ltd] and the respondents [Fenesi Management Co. and Fenesi ltd] are limited liability companies incorporated in Kenya under the Companies Act. Zaidat is registered proprietor of Utility model 192, 66, 83, 99, 189, 76, and 102 following assignments of rights by Navinchandra Lalji the initial registered owner on April 12, 2019. Zaidat has licensed the utility models to Trancewood ltd a company specializing in the production, supply and fixing of Modular Kitchens, home, office and hotel furniture and fittings. Trancewood the licensee has business reputation across East Africa. The requester alleges that Fenesi Management Company is the owner and proprietor of Fenesi Gardens Serviced apartments erected off School Lane in Westlands, Nairobi.The apartments comprise of forty-five one, two, and three-bedroomed apartments.

17. The requester initially stated that the 1st respondent commissioned and began the construction of Fenesi Apartments Gardens a building complex comprising of finished furnished and serviced apartments and guest houses in December 2017. This position shifted in the amended statement of facts where the requester states that the 2nd respondent commissioned, began authorized, and oversaw the construction of Fenesi Apartment Gardens sometime between 2012 and December, 2017.

18. In both the initial and amended statement of facts Zaidat states that it learnt that some of its registered Utility Models had been utilized in furnishing and fittings in the respondent’s Complex in March 2019 and engaged Protection Logics ltd to conduct investigations to establish the veracity of the claims. Zaidat received an investigation report [Exhibit NV 6] from the investigators with a conclusion that the respondent had used and incorporated some of its protected designs without its consent and/or authorization. That investigation report was subjected to expert analysis by Navinchandra [EXHIBIT NV5] which concluded that the respondent had infringed on protected utility models. The requester made demands that the 1st respondent either stops the alleged infringement and use of the Utility Models or obtains a license which were ignored prompting the filing of the infringement proceedings.

19. In addition to the statement of facts the requester placed reliance on statutory declarations, oral testimony of the declarants tendered at the trial, and the filed written submissions in each case. For the requester/Applicant there are filed in each of the cases; two-statutory declarations by Navinchandra Vekaria Lalji one in support of the Requests and statements [dated 27th January, 2021] and one in reply to the respondent’s statutory declarations dated 9th February, 2021, applicant’s witness statutory declaration of Charles Mwangi Kuria [Protection Logic ltd] [July 22, 2021], applicant’s statutory declaration by Samuel Ondieki Mogambi [June 23, 2021]. The requester filed written submissions dated March 4, 2022 and submissions in reply dated April 11, 2022 urging the Tribunal to make a finding of infringement and enter judgment in its favor as prayed in the respective amended requests.

The respondents’ Case 19. The respondents oppose the infringement proceedings and have filed separate Replies/ Counterstatements dated September 24, 2020and May 18, 2021accompanied by replies to the requester’s statements of facts respectively. Additionally, the respondents filed statutory declarations in each of the cases sworn by Emmanuel Kwasi Amoafo [Director of Fenesi Management ltd [1st respondent] dated February 5, 2021 and James Gitoho an architect who is a director of both Triad Architects who were involved in the design, construction and furnishing of Fenesi Gardens Serviced apartments, and Fenesi ltd the developer and the 2nd respondent in these proceedings. In their separate counter-statements, the respondents deny infringing on the requester’s utility models.

21. The 1st respondent filed replies/counterstatements dated October 8, 2020, supported by a statement of facts of even date. The 1st respondent contends that it is a management company with only the reversionary interest in LR NO. 1870/111/582 on which Fenesi Gardens Furnished Apartments are erected. Its shareholders are the owners of the individual units in Fenesi Gardens furnished and serviced apartments which were developed and furnished by Fenesi ltd. It is neither the developer nor the proprietor of the individual units in which the fixtures complained of infringing the requester’s utility models are fitted. It avers that it is wrongly sued, the case against it is vexatious and discloses no reasonable cause of action and the applicant is on a fishing expedition trying to use the law to gain falsely.

22. It further states that the construction of the apartments was commissioned and completed by Fenesi ltd the 2nd respondent in the year 2012 and a certificate of occupation was issued by the Nairobi County Council in 2013. It contends that the claim by the applicant has no merits and constitutes an abuse of the court process. This is the common thread that runs through all the 1st respondent’s Replies to the various infringement claims.

23. The 2nd respondent also denies all the infringement claims. It states that it commissioned the construction of the Fenesi Gardens serviced apartments in the year 2011. The construction was complete by 2013 when a certificate of occupation was issued by the Nairobi City County. Triad Architects were the project Architects. They issued the certificate of practical completion in January 2014. The various fittings and fixtures in the apartments were sourced from Jin Diao Building Materials Trading Co. ltd also known as JD Building Materials Trading Co. ltd based in Guangzhou in the Peoples Republic of China. Mr. Gitoho the project Architect travelled to China between 20th and December 23, 2011 and identified the company that would supply assorted building materials furniture and fittings in the year 2011. The materials were then ordered, fabricated delivered, and fitted in the apartments in batches in the period between 2012 and 2015. They are entitled to continue using the various fixtures as innocent importers who had no notice of the requester’s registrations of utility models.

24. It is further contended that the utility models were not validly registered as they were not new as at the filing dates which span from 2013 to 2016 as the items complained of had been identified in China by the project Architect in the year 2011.

25. Utility Model KE/U/192 – Modular Kitchen Systems the subject of IPT Case 86/2020, has a filing date of 3rd March 2016; Utility Model No. KE/U/66 –Low-Level Carcase System [Subject matter of IPT Case 88/2020 has a filing date of 29th January, 2013 and a registration date of 29th October 2014. Gitoho states that in his long experience dating back 1981 he has seen products similar to Utility Model KE/U/66 –Low level Carcase System being utilized in Kenya and around the world. He exhibited copies of pictures from various Websites pages showing similar products produced as exhibit JG 7 in his statutory Declaration; UM KE U/83 – Door Frame Assembly-MDF room door frame joining system [subject matter of IPT CASE no. 89/2020] has a filing date of 29th January, 2013 and a registration date of 21st January 2015. He exhibits at JG 7 copies of pictures from various website pages depicting similar products and adds that UM 83 was anticipated by the prior art, should not have been registered, its registration is invalid and is incapable of being infringed; UM KE /U/99- MDF Architrave Special[Subject of IPT Case 90/2020] has a filing date of 13th March 2013 and a registration date of 21st July, 2015, is challenged on the grounds that it was not new, was anticipated by the prior art, was in use by contractors in the Kenya market on the filing date. Copies of pictures from various website pages were exhibited as JG 7. UM KE 102 –MDF Room door JOining Glass Slide In System with a filing date of 29th January 2013 and a registration date of 21st July 2015[subject of IPT case 91/2020] is also stated to be invalidly registered, as anticipated by the prior art, in use in Kenya and around the world before the filing date as evidenced in the various website page publications at exhibit JG 7 [containing 2010 IKEA catalogue [Modular Kitchen Systems, 2010 IKEA Catalogue glass door panel without joints, Low-Level Carcase System and Glass DOOR Panel joints found in Amazon , MDF room frame joining system/glass sliding system available in the 2001,2009,2010 and 2012 IKEA catalogues, MDF Architrave Special[1993 IKEA catalogue] MDF Room Door Joining System /glass Sliding System] coupled with the fact the 2nd respondent Procured the products from China before the filing date. On UM 189 – Low-Level Cabinet Carcase Unit [subject of IPT Case NO.92/2020 with a filing date of 7/12/2015 and a registration date of October 19, 2017, the 1st respondent contends it is not new, is invalid anticipated by prior art in Kenya and elsewhere, was already procured from China before the filing date. The same arguments are raised in respect to UM No. 76 which is the subject of IPT Case 93/2020.

26. Ultimately the respondents contend that the requester is not the owner of the subject utility models; the applicant has not proved infringement and the various claims for special damages, general damages and injunction have not been proved by probable evidence.

27. The parties gave oral evidence in addition to the evidentiary material contained in the statutory declarations after which elaborate written submissions were filed by the parties’ advocates in all the seven consolidated cases.

Issues for Determination 28. We have reviewed the pleadings, the evidence tendered by the parties in course of the trial as well as the submissions and authorities. Broadly the following are the issues that fall for determination;a.Whether the 1st respondent is properly sued in these proceedings?b.Whether the respondents infringed utility Models 192, 66, 83, 99, 189, 76 and 102 by the fittings and fixtures /furnishings in Fenesi Serviced Gardens apartmentsc.Whether the requester/Applicant is entitled to the Reliefs sought in IPT Cases 86, 88, 89, 90, 91, 92 and 93 respectively?

Analysis of the Facts, the Law and Determination 29. It is common ground that the 1st respondent is a management Company and was neither the developer nor the owner of Fenesi Gardens Serviced Apartments. The company was not involved in the importation and fitting of the various items alleged to be infringing on the subject utility models. There is ample evidence to show that the apartments were developed and furnished by the 2nd respondent who holds the head lease for the property on which the apartments have been constructed. It is evident that some of the individual units have been sold and transferred to third parties, who are not party to the instant suit and the 1st respondent is not a beneficial owner of any of the units developed by the 2nd respondent. It has not been shown that the 1st respondent has made, imported offered for sale, sold and used or stocked any product within the scope of protection of any of the subject utility models. The act of managing the apartments for the benefit of the registered owner and retaining a reversionary interest in the apartments does not in our view fall under the category of any of the acts to be performed by the registered owner in relation to the subject utility models to the exclusion of other persons under section 54 of the Industrial Property Act, and the performance of which by another person without the registered right holder’s permission would constitute an infringement within the contemplation of section 105 of the Act. In view of this, we find and hold that the 1st respondent is not properly sued as a party from whom reliefs are sought in these infringement proceedings. But misjoinder is not a sufficient basis to invalidate a suit and we will proceed to determine the cases on the merits.

30. We turn to the substantive issue of Whether the respondents have infringed on Utility Models 192, 66, 83, 99, 189, 76 and 102 by various fixtures fitted in Fenesi Gardens Serviced apartments. It is not disputed that the requester is registered owner of utility models 192, 66, 83, 99, 189, 76 and 102 since 12th April 2019 following the assignment of the rights by Navinchandra and certificates of change of ownership issued by KIPI [exhibit NV2]. There is evidence that at the time that the requester acquired rights over the subject utility models from Navinchandra in 2019, the fixtures complained of in Fenesi Gardens apartments had been procured and fitted. Indeed, there is probable and credible evidence that 2nd respondent had taken serious steps to identify and secure the supply of the various fixtures, fittings and furnishings from China before Navinchandra applied for registration of all the subject utility models. According to the evidence tendered by Mr. Gitoho the project Architect, the development of Fenesi Gardens furnished apartments was commissioned by the 2nd respondent in 2011 with a contract date of April 5, 2011. A Certificate of Practical Completion issued by Triad Architects on February 3, 2014 shows a practical completion date of January 31, 2014 [see exhibit EKA 5B in the statutory declarations of Emmanuel Kwasi Amoafo]. Before that, a certificate of occupation dated November 20, 2013 [exhibit EKA 5A] had been issued by the Nairobi City County. There is also uncontroverted and credible evidence that the fittings/fixtures and furnishings fitted in Fenesi Gardens Serviced Apartments were sourced from China, the supplier was identified by Architect Gitoho when he visited China in December 2011 which is about two years before Navinchandra, the requester’s predecessor in title, applied for registration of any of the Utility Models. The evidence on record shows that the earliest filing date is January 29, 2013 [UM 66] and the last filing date is June 3, 2016 [UM 192].

31. The requester’s predecessor in title did not institute infringement proceedings against the respondents in the period preceding the assignment of rights and registration of the Notice of Change of Ownership in the year 2019. In those circumstances, the requester would have no right of claim against the 2nd respondent who would properly be regarded as a prior user under S56 [1] against whom the provisions of section 54[1] of the Act relating to the right of the registered owner to preclude third parties from doing any of the acts listed there under without the registered owner’s permission would have no effect. Section 56[1] of the Act reads;56[1] ‘’ Notwithstanding the provisions of section 54, a patent shall have no effect against any person [hereinafter referred to as ‘’the prior user’’] who in good faith, for the purpose of his enterprise or business, before the filing date or, where priority is claimed, the priority date of the application on which the patent is granted, and within the territory where the patent produces effect, was using the invention or was making effective and serious preparations for such use; any such person shall have the right, for purposes of his enterprise or business, to continue such use or to use the invention as envisaged in such preparations.This section is in Part VII of the Act which applies to Utility Models in the same way as patents by dint of section 81[1] of the Act which provides‘‘Subject to section 82, the provisions of Parts III, IV, VII, VIII, IX, X, XI, XV, and XVI shall apply, mutatis mutandis, to utility model certificates or applications therefore as the case may be.’’Section 82 of the Act has no bearing to the present proceedings as it is concerned with what invention qualify for utility Model certificate, what sections of the Act do not apply in the case of applications for utility model certificates and the term of utility model certificate.

32. In light of the uncontroverted evidence that the features/fixtures, furnishings and fittings in Fenesi Gardens serviced apartments were sourced by the 2nd respondent from China and delivered in the period 2012 to 2015 following Architect Gitoho’s visit to that country to identify a suitable supplier in late 2011; the requesters Utility Models would have no effect on the 2nd respondent and its successors’ right of use of those fittings and fixtures fitted at Fenesi Gardens. In our assessment the visit by Architect Gitoho to China, the identification of the supplier of the fittings and furnishings and subsequent importation of those items is evidence of a party who was making effective and serious preparations for use of those items at Fenesi Gardens Furnished apartments long before the requester’s predecessor in title made the first application for registration of any of the utility models subject of these proceedings.

33. Furthermore the evidence in support of the various infringement claims is rather tenuous predicated as it is on the conclusion that there was infringement contained in the investigation [EXH. NV6 and the expert report [exhibit NV 5]. These documents have no evidential value. The expert opinion is based on an analysis and comparison of photographs allegedly taken from unidentified units within Fenesi Gardens Serviced apartments. Though the requester at first alleged that works at Fenesi were commissioned in 2017 and suggested that the fixtures and fittings alleged to be infringing its utility models were fitted in the post-2017 period no iota of evidence was tendered to prove these allegations and counter the respondent’s evidence that the works were commissioned in 2011 and completed in 2013 when a certificate of occupation was issued and that the fittings, fixtures complained of were sourced from China in 2011 and fitted at the subject premises in the period 2012 to 2015.

34. To prove infringement the requester was obligated to show by probable and credible evidence that each of the items fitted at Fenesi Gardens Furnished apartments and complained of infringing UM192, UM 66, Um83, UM 99, UM 102, UM 189 and UM 76 relate to a product or a process falling within the scope of a validly granted utility model certificate. [See section 105 of the Act]. We observe that all the features complained of are fixtures and fittings that would be found in common use in buildings and apartments. That being the case it was incumbent upon the requester to demonstrate how the various utility models differ from similar products used in the industry and that they were new as at the respective filing dates to entitle the requester to validly claim and be granted exclusive rights thereto. The requester has failed to do this. There are no claims that set apart the requester’s utility models from those in existence and use in the industry as shown by the evidence of Mr. Gitoho.

35. In addition the requester was required to tender evidence to show that the products fitted at Fenesi Gardens Serviced apartments and complained of infringing utility models 192, 66, 83, 99, 189, 76 and 102 have individually taken all the claimed integers of the various utility models. This was not done. The investigator did not take any measurements of any of the items complained of. He only took photographs of fixtures and fittings from unidentified units at Fenesi Gardens which the expert witness who really is not an independent expert witness as he is the originally registered owner of the subject utility models says he compared against the features of the registered utility models at the showroom of Trancewood ltd the licensee. In these circumstances, there is really nothing on the basis of which we can objectively and independently judge the accused items vis-a-vis the features claimed to be protected by the requester’s utility models.

36. We would add that the expert reports on the infringement actions just like the sample quotations [EXH NV7] tendered in support of the special damages’ claims are not objective but subjective documents of no evidentiary value.

Conclusion 37. In the end we hold and find that the requester has not proved on a balance of probabilities that the items fitted in Fenesi Gardens Serviced apartments infringe on any of the registered utility models 192, 66, 83, 99, 189, 76 and 102. Consequently, the requester is not entitled to any of the reliefs sought in IPT Cases 86/2020, 88/2020, 89/2020, 90/2020, 91/2020, 92/2020 and 93/2020.

38. In the upshot the requester’s infringement actions are dismissed with costs to the respondents.

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