Parth Gandhi t/a Microtech (Plaintiff/Applicant) v Sollatek (Kenya) Limited (Defendant/Respondent) - Application for Stay of Proceedings Pending Expungement Proceedings before the Registrar of Trademarks/KIPI Tribunal
The bottom line
#You can fight trademark disputes in the High Court or the KIPI Tribunal, but you cannot use one to delay the other.
What this practically means
#Executive summary
#Key legal issues
#Whether the court should stay proceedings pending expungement proceedings before the Registrar of Trademarks/KIPI Tribunal
Stay refused. Both forums have jurisdiction; the Plaintiff, having filed suit in court and obtained interim orders, cannot refuse compliance with case management directions and then seek to move the dispute to another forum.
The court recognised the KIPI Tribunal's specialised mandate but held that the Plaintiff filed court proceedings in 2017 seeking interim orders the Registrar could not grant, then stalled case management while pursuing parallel expungement proceedings. Granting stay would prejudice the Defendant's counterclaim and flout the existing injunction preserving the status quo pending final determination.
Jurisdiction of the Tribunal and the Court over trademark disputes
The Trademarks Act Cap 506 grants both the Tribunal and the Court jurisdiction to adjudicate on trademark disputes; parties may elect either forum.
The court reproduced Sections 35 and 53 of the Trademarks Act, noting that where an action concerning the trademark is pending, rectification applications must be made to the court, but as a matter of good practice matters ought to be filed at the lowest competent court. Since the Defendant filed a Defence and Counterclaim it wishes to pursue in court, stay would hinder its claim.
Test for stay of proceedings
The court applied the test from Global Tours & Travels Limited (as restated in Mohammed Abdi): stay is a judicial discretion exercised in the interest of justice, weighing expeditious disposal, arguable merits, judicial time and expedition of the application.
The Defendant submitted the test and the court implicitly applied it, finding that the application was not brought expeditiously or in the interest of justice, since the Plaintiff had neglected case management directions issued on 29th May 2018 and sought to stall the suit and counterclaim.
Legal principles established
#- Where both the Trademarks Tribunal and the High Court have jurisdiction over a trademark dispute, a party may pursue its claim in either forum, and whichever forum resolves the dispute first resolves the whole dispute.
- A party cannot decline to comply with case management directions and then seek a stay of proceedings so the matter is heard elsewhere.
- Under Section 53 of the Trademarks Act, where an action concerning the trademark in question is pending, an application for rectification must be made to the court.
Court orders
#- 1.The application dated 13th December 2018 seeking stay of proceedings pending determination of the application and pending proceedings before the Kenya Industrial Property Institute for expungement of trademarks T.M.A.NO.44386 & T.M.A.NO.44387 is dismissed
- 2.Costs of the application to the Defendant/Respondent
- 3.Parties are at liberty to pursue their claim in either of the two forums (the Tribunal and the Court) and upon determination serve the order to the other forum for closure of the matter
- Jurisdiction invoked
- Section 59C of the Civil Procedure Act, Order 51 Rule 1, Sections 1A, 3 & 3A of the Civil Procedure Act Cap 21, and Article 159 of the Constitution of Kenya 2010
Key timeline
#Practical implications
#Frequently asked questions
#Cite this brief
#Cite this brief
Caselaw, "Parth Gandhi t/a Microtech (Plaintiff/Applicant) v Sollatek (Kenya) Limited (Defendant/Respondent) - Application for Stay of Proceedings Pending Expungement Proceedings before the Registrar of Trademarks/KIPI Tribunal", Case Analysis (2019). . Source:
Suggested citation format for research notes or client memos. Always verify the original judgment before relying on any point.