Executive Director, Anti-Counterfeit Authority & another v Uwin Investments Africa Company Ltd & 4 others
The bottom line
#Kenya's Court of Appeal confirmed that regulators must count notice periods from receipt, hear affected parties first, and cannot seize goods or prosecute based on a flawed decision.
What this practically means
#Executive summary
#Key legal issues
#Validity of the expungement of trade mark TMA No 88989 'GDLITE'
The expungement was unfair, procedurally improper and unlawful because the 30-day notice period was computed from posting rather than receipt, and the 1st respondent was not heard before the adverse decision.
Section 3(5) of the Interpretation and General Provisions Act deems service by registered post effected at delivery in the ordinary course; the postal stamp showed receipt on August 7, 2018. Rule 104 prescribes 30 days from notification. Section 44 of the Trade Marks Act and rule 103 require a hearing before an adverse exercise of the Registrar's discretion. Expunging on September 3, 2018, before expiry of the period and without a hearing, breached the Trade Marks Act, article 47 of the Constitution and the Fair Administrative Action Act.
Whether the Executive Director, Anti-Counterfeit Authority was properly sued
Yes. The Executive Director is a body corporate that supervises inspectors and may direct steps under section 23(1); mandamus was rightly directed against it.
Although sections 23, 25, 27 and 28 of the Anti-Counterfeit Act vest seizure, custody and release powers in inspectors, section 10 makes the Executive Director responsible for supervision of inspectors and day-to-day management, and section 33(5) empowers it to cause appropriate steps under section 23(1). The court construed these provisions to mean the Executive Director, acting through its inspectors, is responsible for seizure and can redress wrongful seizures, making it the proper party.
Lawfulness of the seizure of goods and charging of officials
The seizure and charges were unlawful because they were founded on the void expungement decision and effected without affording the 1st respondent a hearing.
The evidence showed the containers were seized after the 3rd respondent's complaint, and charges were preferred only after the Registrar's September 4, 2018 letter confirming the expungement. Since that expungement was itself a nullity, the seizure and prosecution built upon it were improperly founded. Applying Macfoy v United Africa Company, acts founded on a void act are themselves incurably bad.
Whether the judge wrongly decided the merits in a judicial review
No. The judge's remarks on the solar panels and class 9/11 classification were mere observations; in any event merit review is now permissible under Suchan Investment.
The court held that the judge's reference to the omission of solar panels and batteries from class 9 was observational and nothing turned on it. Further, following Suchan Investment Limited, article 47 and the Fair Administrative Action Act permit review of the rationality, reasonableness and motive of administrative decisions, so the judge was not precluded from considering those aspects.
Legal principles established
#- The Executive Director of the Anti-Counterfeit Authority, as the corporate office responsible for supervising inspectors and directing action under section 23(1), is properly sued for mandamus over seizure and release of goods by its inspectors.
- Where a notice is served by registered post, the statutory notice period runs from the date of receipt (or deemed delivery in ordinary course of post), not the date of posting.
- An applicant or registered proprietor must be afforded an opportunity to be heard before the Registrar exercises any discretionary power adversely to them, per section 44 of the Trade Marks Act and rule 103.
- Article 47 of the Constitution and the Fair Administrative Action Act have shifted judicial review to include aspects of merit review of administrative action.
- Decisions founded on wrongful premises and made without hearing are nullities; subsequent actions built on them are equally unlawful.
Court orders
#- 1.Both appeals dismissed with costs to the 1st respondent
- 2.High Court orders of certiorari quashing the Registrar of Trade Marks' decision of September 3, 2018 expunging trade mark TMA No 88989 'GDLITE' affirmed
- 3.Order of mandamus compelling the Registrar to remit the matter for reconsideration and hearing before the tribunal established under the Trade Marks Act affirmed; matter remitted to the Trademark Tribunal
- 4.Declaration that the seizure and detention of containers TINU9962322 and DRYU4535826 was unlawful, unfair and in breach of fair hearing and fair administrative action affirmed
- 5.Order of mandamus directing release of the seized containers affirmed
- 6.Declaration that criminal proceedings relating to the matter were premature, illegal and unfounded, and termination of Criminal Case No 1585 of 2018 ACA, affirmed
- On appeal from
- High Court at Mombasa
- Miscellaneous Application No. 60 of 2018
- Jurisdiction invoked
- First appellate jurisdiction over the High Court's judicial review decision (Constitution Article 164; Court of Appeal Act)
Key timeline
#Practical implications
#Frequently asked questions
#Later judgments citing this (1)
#Judgments in the corpus that rely on this one. Where the Court said how it treated the authority, that is shown.
- Board of Trustees, Telposta Pension Scheme v Retirement Benefits Appeals Tribunal & 3 others[2024] KECA 1926 (KLR)20 Dec 2024applied
Cite this brief
#Cite this brief
Caselaw, "Executive Director, Anti-Counterfeit Authority & another v Uwin Investments Africa Company Ltd & 4 others", Case Analysis (2022). Civil Appeal 114 & 136 of 2019 (Consolidated). Source: https://new.kenyalaw.org/akn/ke/judgment/keca/2022/1335/eng@2022-12-02
Suggested citation format for research notes or client memos. Always verify the original judgment before relying on any point.