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Case Brief · caselaw.co.ke
High CourtPartially Allowed

Safepak Limited v [Defendant]

High Court of Kenya
17 October 2019
MKMary Kasango
958 words in judgment
View original judgmentRead on Kenya Law Watch case
AI-assisted case brief
·~4 min to read original · ~4 min brief

The bottom line

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Registering your unique product design in Kenya gives you the legal power to stop others from copying it.

What this practically means

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Executive summary

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This was an undefended High Court action for infringement of a registered industrial design. Safepak Limited, the plaintiff, is the registered proprietor of industrial design No. 666, registered at the Kenya Industrial Property Institute on 20th September 2011, whose novelty lies in a honey comb pattern applied on the shoulder of a container of a particular shape and configuration. The plaintiff, which has designed, manufactured and sold containers and bottles in Kenya since 1991, alleged that the defendant manufactured for sale a bottle embodying substantially similar features protected by the registration. Because the action was undefended, infringement was not denied. The court examined both the registered design and the defendant's infringing bottle and confirmed that the defendant's bottle embodied substantially similar features, specifically the honey comb pattern on the shoulders, and that its shape and configuration were protected by the plaintiff's registration, contrary to section 105 of the Industrial Property Act. The plaintiff proved, on the required standard, that it is the bona fide registered owner of the design, producing its certificate of registration, which confers the rights in section 92(1) of the Act. The court entered judgment for the plaintiff, issuing two permanent injunctions restraining infringement, ordering delivery up or destruction on oath of all moulds and infringing products, delivery of related documents, and disclosure of the defendant's suppliers and customers. The prayers for inquiry as to damages and account of profits were treated as abandoned for want of evidence. The plaintiff was awarded the costs of the suit.

Key legal issues

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01

Whether the defendant's bottle infringed the plaintiff's registered industrial design No. 666

Holding

Infringement established; the defendant's bottle embodies substantially similar features, specifically the honey comb pattern on the shoulders, protected by the registration.

Reasoning

The action was undefended, so infringement was not denied. The court compared the plaintiff's registered design with the defendant's bottle and confirmed the defendant's bottle embodied substantially similar features protected by the registration, contrary to section 105 of the Industrial Property Act.

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02

Whether the plaintiff proved ownership of the registered design

Holding

Yes, on the required standard, evidenced by the certificate of registration issued by the Kenya Industrial Property Institute.

Reasoning

The plaintiff produced its certificate of registration of the design issued by KIPI, proving it is the bona fide registered owner. Registration confers the statutory rights under section 92(1) of the Industrial Property Act to preclude third parties from the enumerated acts.

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Legal principles established

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  • Registration of an industrial design confers on the registered owner the right to preclude third parties from reproducing, importing, offering for sale, selling or stocking products reproducing the design in Kenya.
  • Performance, without the owner's authorisation, of acts specified in sections 54 or 92 of the Industrial Property Act in relation to a validly granted registration constitutes infringement.

Court orders

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  1. 1.Permanent injunction restraining the defendant, its directors, officers, employees, servants or agents from infringing the plaintiff's industrial design No 666 (honey comb pattern on the shoulders of the container)
  2. 2.Permanent injunction restraining the defendant from infringing the protected design No. 666 by manufacturing, importing, distributing, selling or offering for sale substantially similar bottles or products
  3. 3.Order for delivery to the plaintiff of, or destruction on oath of, all moulds and infringing products in the defendant's possession, custody or power
  4. 4.Order for delivery of all documents relating to the manufacture, importation, purchase, distribution, selling or offering for sale of infringing products
  5. 5.Order requiring the defendant to disclose names and addresses of all those by whom it has been supplied and to whom it has supplied infringing goods
  6. 6.Costs of the suit awarded to the plaintiff
Jurisdiction invoked
Original civil jurisdiction of the High Court; Industrial Property Act (infringement of registered industrial design No. 666)

Key timeline

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Practical implications

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Frequently asked questions

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Cite this brief

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Cite this brief

Caselaw, "Safepak Limited v [Defendant]", Case Analysis (2019). . Source:

Suggested citation format for research notes or client memos. Always verify the original judgment before relying on any point.