Solpia Kenya Limited v Style Industries Limited & another [2015] eKLR

REPUBLIC OF KENYA

IN THE HIGH COURT OF KENYA AT NAIROBI

MILIMANI COMMERCIAL COURTS

CIVIL SUIT NO. 138 OF 2014

SOLPIA KENYA LIMITED………………………………...………APPLICANT

Versus

STYLE INDUSTRIES LIMITED………………………………1ST DEFENDANT

SANA INDUSTRIES LIMITED………………………...………2ND DEFENDANT

RULING

Infringement of trademark

[1] The Motion dated 9th April 2014 is seeking for injunctive orders to restrain the 1st and 2nd
Respondents from infringing on the Applicant’s trademark. The injunction is to restrain the
Defendants “from offering for sale, stocking, distributing, displaying, producing, manufacturing,
packaging, advertising, marketing and/or selling braids, wigs, weaves and artificial hair pieces
bearing the Applicant’s trade mark “GALAXY” or in any way infringing and/or passing off the
Applicant’s trade mark “GALAXY” pending the hearing and determination of this application or
further orders of the Court”. The Applicant claims to be the lawful proprietor of the trademark
GALAXY in class 26 and the certificate thereof was registered on the 21st August 2012. The Applicant
further claims that it is involved in production and selling of hair pieces, wigs and weaves using the
trademark GALAXY to identify and differentiate her goods from the rest in the market and her goods
have gained notoriety in the public domain.

[2] The Applicant submitted that, the 1st and 2nd Defendants are trading in goods in class 26 in the name
of GALAXY, which infringes on the Applicant’s exclusive right in the trademark. Despite issuing a cease
and desist letter, the 1st and 2nd Defendants have blatantly continued to infringe on the Applicant’s
Trademark.

PRELIMINARY POINT OF LAW

[3] The Applicant raised an objection to the 1st Defendant’s Supplementary Affidavit dated 17th
September 2014 and filed on the 27th September 2014 on the ground that it was filed out of time and
without the leave of this honorable court. The Respondent was given 10 days to file the said affidavit with

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effect from 7th of July 2014 and so it ought to have been filed by 17th July 2014. The Applicant’s counsel
did not even ask for its supplementary Affidavit was served on Applicant’s Advocates on the 6th October
2014. It urged the Court to expunge it from the record. They cited the cases of Kiprotich Bore vs.
Joseph Tuwei & Another [2014] eKLR where Justice Omondi held that failure to obtain leave is not a
mere technicality and ordered the Affidavit to be expunged. And also the case of Everest Limited vs.
Katherine Wambui Kuria [2008] eKLR where Justice Osiemo ordered an affidavit filed without leave of
the court to be expunged because the Applicant who is represented knew well that he ought to have
sought leave to file the affidavit but decided to file the same without seeking leave and there is no
explanation for doing so.

ISSUES

Whether the Trademark Galaxy belongs to the Applicant;

Whether the Applicant’s mark as registered extends to wigs, weaves, hair additions and extensions;

Whether the Defendant’s Trademark closely resembles the Applicant’s mark likely to deceive or cause
confusion;

Whether the Applicant is entitled to injunctive orders.

Whether the Trademark Galaxy belongs to the Applicant;

[3] The Applicant submitted that, in accordance with section 7 of the Trademark Act, its registration of
the trademark GALAXY in class 26 gives it the exclusive right to the use of the trade mark in relation to
those goods or in connection with the provision of any services thereof. It submitted that it is aware that
the right to trademark is not absolute as it is subject to the exceptions in section 7, 10 and 11 of the
Trademark Act. But the actions by the Respondents in trading in GALAXY in class 26 are blatant
infringement of the Applicant’s trademark. To them, the claim that the Respondents were using the
trademark GALAXY even before the registration of the Applicant’s trademark does not qualify as an
exception. If that were the case, they ought to have raised an objection to the registration of trademark
within 60 days of its advertisement under the Act. They did not and so their claim of usage is not tenable
in law and can only be in infringement of the trademark. The Applicant further discounted the claim by
the Respondents that the word GALAXY is an English word used in beauty products and the Applicant
cannot claim any exclusive right of the word. The Applicant stated that the word GALAXY in class 26 is
its full registered trademark and it was registered without any restrictions thereto, and by that
registration, the Applicant was conferred exclusive rights on the use of the trademark in relation to the
goods and services for which the trademark is registered, and any person who, not being the proprietor
of the trade mark or a registered user thereof using by way of permitted use, uses a mark identical with
or so nearly resembling it as to be likely to deceive or cause confusion in the course of trade or in
connection with the provision of any services in respect of which it is registered, and in such manner as
to render the use of the mark likely to be taken either as being used as a trade mark commits
infringement of the trademark. The Applicant urged that the Respondents Defendants are both trading in
the mark “GALAXY” in class 26 which is the full trademark of the Applicant. The Applicant quoted the
cases of Chloride Exide (K) Limited & Another vs. Zakayo Muchai Wainaina T/A Chloride Exide
Solar [2008] eKLR, where the court found that the Defendant had infringed on the Applicant’s
trademark by adopting the Applicant’s Trade name, which was also its trademark in full. They urged the
court to hold there is infringement of their trademark and issue an injunction.

[4] The Applicant stated that it is erroneous for the Respondents to aver that the Applicant’s trademark

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is registered in class 26 for “Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and
needles; artificial flowers” and that the registration does not confer rights to wigs weaves, hair additions
and extensions. The Applicant averred that it deals with wigs weaves, hair additions and extensions as
demonstrated in the labels marked as “JNW 1” in the Applicant’s supporting Affidavit. And Registration
of Trademarks is class based in accordance with Section 6 of the Trademarks Act which it provides:-

6 (1) A trade mark shall be registered in respect of particular goods or services, which shall be
classified in the manner specified in subsection

(2) The goods and services in respect of which registration of a mark is applied for shall be
classified in accordance with the International Classification of Goods and Services and any
figurative elements of the mark shall be classified in accordance with the International
Classification of the Figurative Elements of Marks…

[5] The Applicant also contended that the Defendants Trademarks closely resembles the Applicant’s
mark and is likely to deceive or cause confusion; the Applicant’s mark is GALAXY in class 26; both
Defendants’ marks are also GALAXY in wigs, weaves, hair additions and extensions; the goods
manufactured and sold by the Defendants are all similar and are likely to deceive the public into
believing that the Defendants are the agents of the Applicant. They relied on the case of Rysta (1945)
60 R.C.P where Greene M.R held that a decision on whether a mark so resembles another as to be
likely to deceive or cause confusion is a finding of fact. From the get up of the Applicant’s products and
those of the Defendants, they are so strikingly similar likely to cause confusion. The Applicant presented
the similarities in the tabular form below;

SOLPIA SANA STYLE

ADVERTISEMENT An African face model An African face model An African face model
TYPE curly weave curly weave curly weave

COLOUR Coloured weave Coloured weave Coloured weave

TRADE NAME GALAXY GALAXY GALAXY

[6] The Applicant claims that, from the above it is clear the Defendants have not only adopted the
Applicants brand name but have also adopted the Applicant’s get up thus making it impossible for the
customers to differentiate the three brands. The Court should use the test of an Average customer and
will come to the conclusion that there is a real probability of confusion to customers. In the case of
Group Four Security Limited vs. G4S Security Services (K) Limited, Azangalala J held; that marks
were strikingly similar that the possibility of confusion would not depend on the class, sophistication…and
that…the similarities at a casual glance were more than the differences…in my view visually and
phonetically, the two marks are so strikingly similar that a casual observer would not easily notice the
difference.

[7] For the above reasons the Applicant posits that it has established prima facie case with a probability
of success; that if the injunction is not granted, the applicant might suffer irreparable injury that cannot be
adequately compensated by an award of damages and finally that if the court is in doubt it will decide the

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matter on a balance of convenience. Prima facie case as defined by the Court of Appeal in the case
of Mrao Ltd –vs- First American Bank of Kenya Ltd & 2 others (2003) KLR 137 is a case in which on
the material presented to the court, a tribunal properly directing itself will conclude that there exists a
right which apparently has been infringed by the opposite party as to call for an explanation or rebuttal
from the latter. It is convinced that it is entitled to injunctive relief. The court in Pharmaceutical
Manufacturing Company – vs – Novelty Manufacturing Limited: HCCC No.746 of 1998 (UR),
Ringera J as he then, observed as follows at page 14 of his judgment:

“…Registration of a trademark confers the right to exclusive use of the mark. Infringement of
the trade mark is a tort of strict liability. Intention and motive are irrelevant considerations. …The
right is a statutory one…”

[8] In Wilson MuriithiKariuki T/A Wiskam Agencies V Surgipharm Limited, Odunga J stated,

“…The position as of now is that the Applicant is the registered proprietor of the said Trade Mark
and until that proprietorship is successfully challenged, has the right to enjoy the benefits that
accrue therefrom. To allow the defendants to also distribute a product bearing the same name
would amount to introducing not only unnecessary confusion in the mind of the consumers of
the said product but may engender chaos in the market.”

[9] The Applicant asserted that, contrary to the allegations by the 1stdefendant, it is not a habitual
tortfeasor on infringement. They also distinguished the Diva case (HCCC 496 of 2012) as it was
concluded by way of consent between the Applicant and defendant. Judicial notice should be taken that
the signing of consent did not amount to admission of the allegations therein. With regard to HCC 175
OF 2013, HCCC 285 OF 2013 and HCCC 316 OF 2013, the Applicant submitted that these cases are
still pending in court and to assert that the Applicant is an infringer on the basis of the cases is
unfounded and out of malice. Article 49 of the constitution confers the right of fair hearing to any
accused. Furthermore, the Applicant submitted that the 1st defendant and the Applicant are rivals in the
hair sector and that the defendants have also been copying the Applicants invented marks on the pretext
of having traded in a similar mark before the Applicant and under the guise of their registered trademark,
DARLING. See herein attached opposition proceedings in relation to the Trademark Vicher.

[10] The Applicant was categorical that it was not guilty of lashes as claimed by the Respondents. It also
refuted claims by the 1st defendant in its replying affidavit that the Applicant is the one who has copied
the mark Galaxy from the 1st Defendant and its predecessor and that it has used the same on its goods
since 2007. If both the defendants assert that they are the owners of the trade mark galaxy, why haven’t
they sued one another for passing off goods" In addition to the foregoing, if they really were the owners
of the mark, why didn’t they oppose the mark when it underwent the advertisement process in the KIPI
journal" The defendants had 60 days to oppose the same application but did nothing. If their assertion
that they had traded in the mark before the Applicant is genuine, they surely would have opposed. The
2nd defendant assertion that the same was fraudulently obtained is unfounded and full of malice.
Moreover, why didn’t they sue the Applicant for passing off their good or applied to have the marks
expunged from the register yet they sat on their alleged right. If anyone is guilty of laches, it is the
defendants. According to their averments, the first defendant alleged that they started trading in 2007
while the 2nd defendant evidenced invoices dated 2011. The Applicant submitted that, in the
circumstances, the defendants cannot come to the court of equity after 4-5 years to raise a dispute that
they had rights in respect of the alleged mark. Their claim would fall flat in the face of laches as they are
not vigilant litigants and slept on their rights.

[11] Given that this is a case of infringement of trademark and the Defendants continue to pass off for

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their goods as if they are those for the Applicant, the Applicant averred that they will suffer irreparable
damage unless an injunction is issued. In addition, the Applicant states that it has invested a lot in
manufacture, advertisement and packaging of its products to attract customers, and it would be fair that
this honourable court grants an injunction to prevent the defendants from continuing to derive benefit
from the Applicants goodwill. The defendants’ claim that the injunction will cause them irreparable
damage is a ploy and unsubstantiated. The invoices submitted by the defendants are suspicious and do
not meet the standard of proof, for, they are not signed and dated; the dates on the notes are neither
consecutive nor sequential; and different codes for the same product for the same customer have been
used. The Defendants simply tendered these impugned invoices to make the court to believe that they
make millions in the sales of the impugned products bearing mark Galaxy. They cited the decision by
Mbaluto J, in Beirsdorf Ag vs. Emirchem Products Limited, to support that the applicant had
established a prima facie case. In any event, he Applicant says that the balance of convenience tips in
favour of granting the injunction. They cited the decision by J.B. Ojwang, J (as he then was) in Amir
Suleiman vs. Amboseli Resort Limited HCCC No. 1078 of 2003 as well as the decision by Mabeya J,
in Olympic Sports House Limited V School Equipment Centre Limited 2012 eKLR on balance of
convenience tilting against the Defendant continuing to trade in goods and equipment that contain the
offending trade mark.

[13] The Applicant concluded that, being a registered proprietor of the Trademark GALAXY in class 26
has established that it has a right which the Defendants have infringed and continue to infringe by using
the mark GALAXY in goods in class 26 thus likely to cause confusion in the market as to the Origin of
the goods. The injunction should be granted.

[14] The Applicant also made a further rejoinder to the submissions by the 1st Respondent on a point
of law. The 1st Defendant argued that Order 4 Rule 1 (4) of the Civil Procedure Rules 2010 provides that
for an agent to be recognized in respect of a corporation, such officer of the corporation must be duly
authorized under the corporate seal. According to the Applicant, although the deponent John Nganga
Waweru did not show the express authority under the seal of the Applicant, this does not make the
affidavit a non-affidavit and neither does it make the application and the suit incurably incompetent. They
cited the case of Republic vs. Kenya Ports Authority & another Ex-parte Makupa Transit Shade
Limited Mat International Limited [2014] eKLR where the Honourable judge stated that;

“Where the Applicant is a corporation, the verifying affidavit shall be sworn by an officer of the
company duly authorized under the seal of the company to do so. Nowhere is it stated that such
authority or resolution must be filed. The failure to file the same may be a ground for seeking
particulars assuming that the said authority does not form part of the Applicant’s bundle of
documents which commonsense dictates it should. Of course, if a suit is filed without a
resolution of a corporation, it may attract some consequences. The mere failure to file the same
with the plaint or with the Registrar of companies, as the requirement is extended by the
defendant, does not invalidate the suit”.

[15] Also in the case of Republic vs. Registrar General and 13 Others Misc. Application No. 67 of
2005 [2005] eKLR Kimaru J. held that

“…the position in law is that such a resolution by the Board of Directors of a company may be
filed any time before the suit is fixed for hearing as there is no requirement that the same be filed
at the same time as the suit. Its absence, is therefore, not fatal to the suit, at least not at this
stage.”

[16] The Applicant cited more judicial authorities; Leo Investments Limited vs. Trident Insurance

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Company Limited [2014] eKLR on this point where Justice Odunga further held,

“I am not prepared to hold that this suit was commenced without authority of the Applicant as to
do so would amount to turning this Court into an academy of law rather than a court of justice.”

The omission does not make the affidavit fatally defective and does not go to the jurisdiction. In any
case, the Applicant averred that it is ready and willing to file the authotiyy as soon as possible and before
the hearing of the matter herein.

The Respondents returned fire

[17] The Respondents filed separate submissions but they argued on similar stand point. I will,
therefore, analyze their submissions together. The Respondents started by saying that the Applicant is
yet to cause service of summons on the Respondents, and as a result, they have neither entered
appearance nor filed their Statements of Defence. The 1st Respondent relied on the Grounds of
Opposition dated 2nd July, 2014; Replying Affidavit by Mahmoud Saffideen sworn on 3rd July, 2014 and
filed in Court on 4th July, 2014; and Supplementary Affidavit by Mahmoud Saffideen sworn on 17th
September, 2014 and filed in Court on 26th September, 2014. And the gravamen of the 1st Defendant’s
case is two-told; firstly, that the 1st Defendant has not infringed nor passed-off the Applicant’s trade
mark and secondly and in the alternative, that the Applicant’s registration of the mark cannot stop the 1st
Defendant use of the trade mark, the 1st Defendant having been using the trade mark prior to the
Applicant’s registration as proprietor thereof. According to the Respondents, the certificate of
registration of Trade Mark, marked as exhibit “JNN 1”, in the Supporting Affidavit indicates it was to take
effect from 21st August, 2012. The mark is registered in Class 26 in respect of;

“Lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles, artificial
flowers”.

[18] The 1st Defendant has laid evidence of Asset Purchase agreement marked “MS 1” which
assigned to its assets, including trade marks and names used by its predecessor, Strategic Industries
Limited. The assets are defined therein to mean also intellectual property and at page 7 of the bundle of
the Replying Affidavit, Intellectual Property is defined to mean;

(i)The applications, (ii) the Registered Trade Marks, (iii) the unregistered Trade Marks…”

Principally, the 1st Respondent has asserted the fact that it acquired the “GALAXY” trade mark from its
predecessor, Strategic Industries Limited which was using the trade mark long before the Applicant
acquired its registration. The 1st Respondent has produced fliers of the trade mark, “MS 2” in the name
of its predecessor, done in the year 2008. It is not disputed that the Applicant joined the Kenyan Beauty
Industry in 2011-2012. The 1st Respondent further alleged malpractice by the Applicant; that the
Applicant is a perennial tortfeasor, lifting, copying and placing in the same market goods with similar
trademarks as those of the 1st Defendant. The 1st Defendant has claimed that the Applicant has no
respect for intellectual property rights. Indeed, there are several cases filed against the Applicant by the
1st Defendant or its predecessor. These are mentioned in paragraph 9 of the replying affidavit of
Mahmoud Saffideen and indeed the Plaints in those cases are exhibited from page 107 to 125 of the
bundle of the said Replying Affidavit. One such case being HCCC No. 496 of 2012, where the Applicant
conceded to the claim, ceased and discontinued the use of the trade mark complained of. In effect, the
1st Defendant is alleging mala fides by the Applicant and has exhibited a letter dated 25th June, 2014,
“MS 8”, to show all manner of tricks the Applicant is using to entrench itself in the market including
comforting its clients in the face of accusations of infringement.

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[19] The 1st Respondent also submitted on the principles guiding the grant of an interlocutory
injunction in Giella –vs- Cassman Brown [1973] EA 358. They argued that the Applicant has not
established a prima facie case with a probability of success. Whereas the Applicant may have
registered the trade mark “GALAXY“, it is obvious that the protection granted to the trade mark is in
respect only of “Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and
needles; artificial flowers”. There is no extension to weaves or hair pieces. Secondly, the
Respondents urged that the Applicant has not denied that it commenced its operation only about three
(3) years ago. It has not denied the existence of the 1st Defendant and its predecessors as household
entities in the beauty industry in Kenya. Strategic Industries Limited assigned to the 1st Defendant both
registered and unregistered trademarks. Mr. Mahmood Saffideen, the 1st Defendant’s Managing
Director, and previously the Managing Director of Strategic Industries Limited, deposes as follows in his
Replying Affidavit;

13. THAT accordingly, it is the Applicant who has copied the trade mark “GALAXY” from the 1st
Defendant and its predecessor and it can therefore have no legal right to stop the 1st Defendant
from using the same on its goods.

14. THAT the 1st Defendant and its predecessor have used the trade name “GALAXY” for its
weave products since the year 2007 and the Applicant cannot rely on the fact of registration,
which it must have obtained dishonestly, to assert exclusive use thereof contrary to its averment
and desire in paragraph 9 of the Supporting Affidavit”.

[20] The Respondents contended that as the Applicant has relied on Section 7 of the Trade Mark Act
his trademark rights are limited to and in connection to the goods to which it is registered and that by the
mere fact that the 1st Defendant uses the trade mark for weaves and hair pieces, that right has not been
infringed. The Applicant’s right of use granted by registration under section 7 of the Act is not absolute
and prior use of a registered trade mark vests a right of use in the person with such prior use which is
not taken away by registration. Section 10 of the Trademarks Act states clearly that registration of
trademark does not ‘’…entitle the proprietor or licensee of a registered trade mark to interfere with
or restrain the use by any person of a trade mark identical with or nearly resembling it in relation
to goods in relation to which that person or a predecessor in title of his has continuously used
that trade mark from a date anterior…”. Accordingly, as the 1st Respondent and its predecessors
Stripes Industries Limited and Strategic Industries Limited had been using the trade mark from a date
anterior, the Applicant now being registered as the proprietor of the trade mark has no legal right to stop
the 1st Defendant from using the trade mark. The rights of use are vested in the prior user and cannot be
interfered with even by registration of the mark by any other person. In these circumstances, the
Applicant has failed to establish a prima facie case with a probability of success. It will also not suffer
irreparable loss and has not demonstrated that damages will not be adequate compensation should its
case succeed after trial. The Applicant’s lethargy is not any helpful as it admitted having become aware
of the Defendants’ activities in November, 2013 but did not consider it necessary to move the Court with
speed and rather it waited until April, 2014, a period of about five (5) months later to commence these
proceedings. The Applicant is indolent. Thus, the balance of convenience cannot be in favour of the
Applicant and so the Respondents prayed for the application to be dismissed with costs. The appropriate
order should be to keep the status quo pending hearing of the suit as the Respondents will suffer
irreparable loss.

[21] The veracity of the 1st Defendants’ annexures is a matter for evidence at trial. The facts relied
upon by the parties are disputed and so an interlocutory order of injunction be granted –See the case of
Benjamin Nzioka and 7 Others –vs- Juma Khamisi and 8 Others, HCCC No. 3224 0f 1993
(unreported) where Bosire J. (as he then was) said as follows;

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“The law on injunction is clear. An interlocutory injunction will not issue where facts upon which
the application for it is based are in dispute. In the above circumstances, one cannot possibly
say presently that the election of the Respondent was or was not regular. To reach such a
conclusion, it will be necessary to call witnesses, examine and cross-examine them to
establish the true facts. It is then that one will confidently say whether or not the alleged
election of the Respondent was regular…….”

[22] The Respondents argued that the application is incurably incompetent as the Supporting Affidavit
of JOHN NG’ANG’A WAWERU sworn on 10th April, 2014 is a non-affidavit as it offends Order 4 Rule 1
(4) of the CPR. The Deponent has cited no authority to swear the affidavit. He cannot therefore have the
capacity to depose to matters in dispute. Neither the supporting affidavit nor the affidavit verifying the
Plaint has attached the authority under Seal of the Applicant bestowing power unto the deponent to
swear the affidavit. On this, they cited the case of Elite Earthmovers Limited –vs- Krishna Behal &
Sons Civil No. 474 of 2002 (unreported) where this Court held;

“It is now, I think, a matter of judicial notoriety that an affidavit by a corporation, whether in
verification of a Plaint or an application thereunder will be struck out on the ground of being
defective and incompetent if not authorized and signed by a person who is not only an officer of
the corporation, but also duly authorized to do so and sign”.

See also the case of Mumias Sugar Company –vs- Oniango [2005] 1 KLR 373. In all therefore, they
urged the court to dismiss the application.

2nd Respondent’s submissions

[23] The 2nd Respondent substantially supported the 1st Respondent’s submissions and stated that
both are manufacturers, distributors and wholesalers dealing with hair pieces, weaves wigs, hair
extensions and hair conditions and has been in business in Kenya and the East African region for a long
time. The Applicant on the other hand is a new comer in the business dealing with the same items. The
1st and 2nd Defendants have been competitors for some time now. The gist of the 2nd Defendants
argument in opposition to the Applicant’s application is the fact it had prior use of the Trade Mark Galaxy
long before the Applicant/Respondent was registered as the owner of the trade mark. And so they
should not be restrained from using their trademark. In any event, Applicant’s trademark was for the
following goods lace, embroidery, ribbons & braids, buttons, hooks and eyes, pins, and needles, artificial
flowers. The 2nd Respondent deals in wigs, weaves, hair additions and hair extensions. Exceptions to
exclusive rights of trademark are aimed at preserving the common Law rights of an individual as was
clearly stated in the South African case Number 16926/11 Extraction (PTY) ltd vs Tyre corp (PTY)
Ltd in interpreting Section 36(1) of the South Africa’s Trademarks Act-an equivalent to section 10 of the
Kenyan Act-that:

“The upshot of my finding is that the Respondent had a right to use and its predecessor in title…
had used the trade mark prior to the applicant seeking registration of the trade mark………is that the
application for an interdict fails and the defence raised by section 36(1) of the Act succeeds with
costs.

[24] In the circumstances Applicant is not entitled to any injunctive relief. Contrary to the Applicant’s
submissions the 2nd Respondents has not adopted and or stolen the Applicants trade mark galaxy rather
it is the Applicant that has adopted the 1st and 2nd Defendants trade mark and rushed to the Kenya
Industrial property and had the same registered. In the European case of Chartered Institute of Patent
Attorneys Vs. Registrar of Trade Marks, C-307/10 (IP Translator), the court was asked to answer three

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questions;

a. Is it necessary for the various goods or services covered by a trade mark application to be
identified with any, and if so what, particular degree of clarity and precision;
b. Is it permissible to use the general words of the Class Heading of the International Classification
of Goods and Services established under the Nice Agreement of June 15, 1957 (as revised an
amended from time to time) for the purpose of identifying the various goods or services covered
by a trade mark application;
c. Is it necessary or permissible for such use of the general words of the Class Headings of the said
International classification of Goods and Services to be interpreted in accordance with
Communication No.4/03 of the President of the Office for Harmonisation in the Internal Market of
16 June 2003 (OJ OHIM 2003 P.1647).”

The court stated that;

“Accordingly, in order to respect the requirements of clarity and precision mentioned above, an
applicant for a national trade mark who uses all the general indications of a particular class
heading of the Nice Classification to identify the goods or services for which the protection of
the trade mark is sought must specify whether its application for registration is intended to cover
all the goods or services included in the alphabetical list of the particular class concerned or
only some of those goods or services. If the application concerns only some of those goods or
services, the applicant is required to specify which of the goods or services in that class are
intended to be covered”.

In answering the three questions, the court answered as follows;

“Therefore the answer to the questions referred is that:

a. Directive 2008/95 must be interpreted as meaning that it requires the goods and services
for which the protection of the trade mark is sought to be identified by the applicant with
sufficient clarity and precision to enable the competent authorities and economic
operators, on that basis alone, to determine the extent of the protection conferred by the
trade mark;
b. – Directive 2008/95 must be interpreted as meaning that it does not preclude the use of the
general indications of the class headings of the Nice Clarification to identity the goods
and services for which the protection of the trade mark is sought, provided that such
identification is sufficiently clear and precise;
c. – an applicant for a national trade mark who uses all the general indication of a particular
class heading of the Nice Clarification to identify the goods or services for which the
protection of the trade mark is sought must specify whether its application for registration
is intended to cover all the goods or services included in the alphabetical list of that class
or only some of those goods or services. If the application concerns only some of those
goods or services, the applicant is required to specify which of the goods or services, the
applicant is required to specify which of the goods or services in that class are intended
to be covered”.

[25] In the circumstances the 2nd Respondent’s humble submission was that the Applicant’s mark be
restricted to the goods mentioned in the certificate of registration. Therefore, the 2nd Respondent has not
engaged in passing off and /or infringing on the Applicant’s trade mark. They have failed to show the
distinctiveness of their mark to warrant that their mark will be subjected to passing of by other names. In

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the case of Erven Warnink Besloten Vennootschap Diplock gave the modern characteristics of a passing
off action which are;

i. Misrepresentation;
ii. Made by a person in the course of trade;
iii. To prospective customers of his or ultimate consumers of goods or services supplied by him;
iv. Which is calculated to injure the business or goodwill of another trader;
v. Which causes actual damage to a business or goodwill of the trader by whom the action is
brought.

THE DETERMINATION

Preliminary issues

[26] This is a claim for infringement of trademark under section 7 of the Trademark Act. But before I
engage myself in the real issues in controversy, I wish to determine two preliminary issues which
emerged in the submissions of the parties. The first one, and which is straight forward, is on the
Supplementary Affidavit filed by the 1st Respondent on 26th September, 2014. The same was validated
by the court on 14th November, 2014 upon consent of parties. I say no more as the affidavit is part of
record. The second issue is on Order 4 Rule 1 (4) of the Civil Procedure rules which provides as follows;

“Where the Applicant is a corporation, the verifying affidavit shall be sworn by an officer of the
company duly authorized under the seal of the company to do so”.

Much judicial ink has gone towards interpretation of this rule and I need not multiply the innumerable
judicial decisions on the point. I am only content to cite the case of Republic vs. Kenya Ports Authority
& another Ex-parte Makupa Transit Shade Limited Mat International Limited [2014] eKLR where
the judge stated that;

“Where the Applicant is a corporation, the verifying affidavit shall be sworn by an officer of the
company duly authorized under the seal of the company to do so. Nowhere is it stated that such
authority or resolution must be filed. The failure to file the same may be a ground for seeking
particulars assuming that the said authority does not form part of the Applicant’s bundle of
documents which commonsense dictates it should. Of course, if a suit is filed without a
resolution of a corporation, it may attract some consequences. The mere failure to file the same
with the plaint or with the Registrar of companies, as the requirement is extended by the
defendant, does not invalidate the suit”.

Also the case of Republic vs. Registrar General and 13 Others Misc. Application No. 67 of 2005
[2005] eKLR where Kimaru J. held that:-

“…the position in law is that such a resolution by the Board of Directors of a company may be
filed any time before the suit is fixed for hearing as there is no requirement that the same be filed
at the same time as the suit. Its absence, is therefore, not fatal to the suit, at least not at this
stage.”

[27] I take the view that the authority under seal given to the deponent of an affidavit on behalf of a
corporation need not be filed at the same time as the suit; it may be filed later before the trial
commences. Therefore, at this stage, it will be premature to proclaim that failure to annex the authority
under seal makes the affidavit or the application or the suit fatally defective. I dismiss the objection. That

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notwithstanding, any affidavit which is sworn on behalf of a corporation should contain an averment
disclosing the position held by the deponent in the corporation, and that it is sworn on behalf and under
the authority of the corporation concerned. I will now proceed to determine the merits of the application.

The substantive issues

[28] As I have already stated, this is a case of alleged infringement of trademark and passing off
goods in relation of which the trademark is registered. The Applicant claims the Respondents have
infringed its trade mark and should be restrained from doing so. I have considered all the rival arguments
of parties, the pleadings and the affidavit evidence together with the annexures thereto. There are two
things which are not in dispute. First, all the parties herein, the Applicant and the Respondents, deal in
beauty and cosmetic products. Second, it is not in doubt that the Applicant is the proprietor of the Trade
Mark: GALAXY Trade Mark No.: 75929 Class: 26 (Lace, embroidery, ribbons and braids; buttons,
hooks and eyes, pins, and needles; artificial flowers). The Applicant says that, as such proprietor of
trademark in question, he has an exclusive use of the trademark without infringement by others. And
that, the Respondents, by manufacturing, advertising and selling GALAXY cosmetics products of class
26; wigs, weaves, hair additions and hair extensions, and other cosmetic products are infringing on the
Applicant’s trademark. The Respondents on the other hand, argue that, they and their predecessors
have been using the trade mark GALAXY; been manufacturing, advertising and selling cosmetics
products including wigs, weaves, hair additions and hair extensions since 2007, which is way before the
Applicant registered the trademark and entered the beauty field of business. They have indeed accused
the Applicant of being a perpetual infringer of the 1st Respondent’s trademarks. According to the 1st
Respondent, some of these infringements resulted into court cases number NBI HCCC NO 496 of 2012,
NBI HCCC NO 285 of 2013 and NBI HCCC NO 316 of 2013. In case Number NBI HCCC NO 496 of
2012, the Applicant conceded the infringement, ceased and discontinued manufacturing, selling and or
distributing the 1st Respondent’s products bearing the 1st Respondent’s trademark. The 1st Respondent
stated that its predecessors, M/S Stripes Industries Limited and Strategic Industries Limited were using
the trademark GALAXY on their products which they passed on to the 1st Respondent through Asset
Purchase Agreements annexed to the Replying Affidavit herein. That fact was not denied at all.

[29] Despite the foregoing submissions of parties, the Respondents and the Applicant agree that the
right to exclusive use of trade mark under section 7 of the Trade Marks Act is not absolute. The point of
departure is twofold; one, the Applicant argued that its trade mark covers wigs, weaves, hair additions
and hair extensions whereas the Respondents posit it does not and is restricted to the goods stated in
the trade mark, i.e. Lace, embroidery, ribbons and braids; buttons, hooks and eyes, pins, and needles;
artificial flowers. The other is found in the obstinate refusal by the Applicant to acknowledge that the
Respondents and their predecessors were using the trade mark GALAXY long before it registered the
trade mark and entered the beauty world of business. The Applicant has instead said that the
Respondents ought to have raised an objection to registration of trade mark within 60 days of the
advertisement of application for registration. And, by failing to so lodge an objection, they lost their right
to use the trade mark and any use thereof after the registration is infringement of trade mark. The
Respondents, however, are of the view that the exceptions in section 7 and 10 of the Trade Marks Act
cover their situation, and the registration of the trade mark GALAXY does not affect their anterior right to
use the trade mark. These arguments make the court to opine that the facts upon which the Application
for injunction is founded are clearly disputed; and on solid grounds of law. Each side has powerful points,
and each holds on some right; I do not think, therefore, it is fair to determine most of these arguments
unless on the basis of full scale hearing on merit because they go to the root of the cause before me.
Except, I should state that, as of law, the right under section 7 of the Trade Marks Act is not absolute; it
is subject to exceptions in section 7, 10 and 11 of the Act. According to section 10 of the Trade Marks
Act, the registration of trade mark does not entitle the proprietor of the trade mark to interfere with or

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restrain the use by any person of a trade mark identical with or nearly resembling it in relation to
goods in relation to which that person or a predecessor in title of his has continuously used that
trade mark from a date anterior. For ease of reference, the short title or side note to Section 10 reads:
Saving for vested rights and provides as follows

Saving for vested rights

Nothing in this Act shall entitle the proprietor or a licensee of a registered trade mark to interfere
with or restrain the use by any person of a trade mark identical with or nearly resembling it in
relation to goods in relation to which that person or a predecessor in title of his has continuously
used that trade mark from a date anterior—

a. to the use of the first-mentioned trade mark in relation to those goods by the proprietor or
a predecessor in title of his; or
b. to the registration of the first-mentioned trade mark in respect of those goods in the name
of the proprietor or a predecessor in title of his, whichever is the earlier, or to object (on
such use being proved) to that person being put on the register for that identical or nearly
resembling mark in respect of those goods under subsection (2) of section 15.

Therefore, as a principle of law, the fact of registration of trade mark per se does not entitle the proprietor
of trade mark to an automatic injunction to restrain use of the trade mark by a person who has
continuously used the trade mark prior to, during and after the registration of trade mark. In other words,
in the face of a claim of prior user of trade mark, and absent other strong and cogent evidence, the fact
of registration of trade mark does not invariably constitute a prima facie case with a probability of
success in the sense of the case of Giella vs. Cassman Brown. Where section 10 is called into play,
the court should be careful not to use the fact of registration of trade mark as the sole basis of restraining
the use of the trade mark by the person claiming prior use of the trade mark.

[30] Again, the Applicant’s trade mark is for lace, embroidery, ribbons and braids; buttons, hooks and
eyes, pins, and needles; artificial flowers. And whether under class 26, the above goods listed in the
Certificate of Registration extends to wigs, weaves, hair additions and hair extensions, is a matter which
will require copious factual and legal probing in order to determine. Resort to instruments such as the
International Classification of Goods and Services and contemporary jurisprudence only shows the
intricacy of the issue which the court should not determine without further elucidation by evidence. In the
circumstances of this case, and the fact that evidence of use anterior has been presented, the test of
balance of convenience is most apt; the balance of convinience tilts in favour of refusing the injunction
and asking parties to prosecute their respective cases in the trial without delay. The upshot is that I
dismiss the application dated 10th April, 2014. Consequently, I direct the parties to comply with pre-trial
requirements within 30 days and have the matter fixed down for hearing. One more thing; since the
Applicant is the proprietor of the trade mark, I will not condemn it to costs. Instead, I order that each
party shall bear own costs. It is so ordered.

Dated, signed and delivered in court at NAIROBI this 9th day of February 2015

----------------------------------------------------

F. GIKONYO

JUDGE

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