Sanitam Services (E.A) Ltd v Rentokil (K) Ltd & Kentainers (K) Ltd
The bottom line
#Kenya's Court of Appeal confirmed patent rights begin only when a patent is granted, not when you apply, and patent owners must prove infringement themselves.
What this practically means
#Executive summary
#Key legal issues
#Commencement of patent rights
Patent rights under sections 35 and 36 of Cap 509 arise only upon grant of the patent, not upon filing of the application; a strained construction cannot extend protection to an ungranted patent.
The court construed sections 35, 36 and 39 together and held that protection attaches to the owner of a patent after grant. An application to KIPO made in September 1997, unpublicised and ungranted by the time of suit, could not preclude third parties who had no knowledge of it. The new Act's publication provisions confirm this reading.
Burden of proof of infringement
Section 116 places the burden of proving infringement, including its timing, on the claimant; the appellant failed to prove when the respondents' product entered the market or that any infringement occurred after grant.
The court deferred to the trial judge's finding that the appellant did not prove when the breach occurred. Both parties' products were in the market before the application; the appellant marketed its bin unprotected and at its own peril. No evidence established post-grant infringement.
Injunctive relief after grant of patent
Once the court found a valid patent had been granted, the natural relief was an injunction, which the court granted to last the life of the patent from 16th December 1999, the date the grant was pleaded.
Although the appeal on infringement failed for lack of proof, the unchallenged finding of a valid ARIPO patent entitled the appellant to protection. The court granted injunctive relief in terms of the amended plaint prayers (a)(i)-(v), effective from the date the patent was pleaded, consistent with section 36.
Remedies for patent infringement - election between damages and profits
Damages and an account of profits are alternative remedies requiring an election; recoverable profits are net profits, not gross profits.
Relying on Brooke Bond v Chai Ltd and Jiwaji v Sanyo Electrical Co Ltd, the court stated that a successful plaintiff must elect between damages and profits, and that profits recoverable are net profits after deducting expenses. No election was made here, and the damages issue was hypothetical.
Legal principles established
#- The rights of a patent owner under section 35 of the Industrial Property Act (Cap 509) afford protection only after grant of the patent, not from the date of application.
- An unpublicised application for patent registration cannot found a claim of infringement against third parties.
- The burden of proving infringement of industrial property rights lies on the party claiming infringement, per section 116 of the Act.
- Damages and an account of profits are alternative remedies; a plaintiff must elect between them.
Court orders
#- 1.An injunction to last the life of the patent with effect from 16th December 1999, in terms of prayer (a)(i), (ii), (iii), (iv) and (v) of the amended plaint
- 2.The appeal be and is hereby dismissed
- 3.Each party to bear its own costs of the appeal and in the court below
- On appeal from
- High Court of Kenya at Nairobi
- H.C.C.C. No. 58 of 1999
- Jurisdiction invoked
- First appellate jurisdiction over the High Court (appeal by way of retrial)
Key timeline
#Practical implications
#Frequently asked questions
#Cite this brief
#Cite this brief
Caselaw, "Sanitam Services (E.A) Ltd v Rentokil (K) Ltd & Kentainers (K) Ltd", Case Analysis (2006). Civil Appeal 228 of 2004. Source: https://new.kenyalaw.org/akn/ke/judgment/keca/2006/362/eng@2006-07-28
Suggested citation format for research notes or client memos. Always verify the original judgment before relying on any point.