Ezeetile Kenya Ltd v Dg Services Limited

5. The Defendant continues to infringe the Plaintiff’s trademark and the continued passing off of the Defendant’s products as the Plaintiff’s goods has caused the Plaintiff to suffer massive financial loss and irreparable harm to its goodwill and brand identity. 6. The Plaintiff prays that judgment be entered against the Defendant as prayed in the Plaint. 7. The Defendant did not enter appearance nor file a Statement of Defence. The matter proceeded for hearing ex parte. The Plaintiff’s witness, one Stephen Mwadime, the Plaintiff’s Commercial Manager produced his witness statement dated 24/04/2023 as his evidence in chief. He also produced as exhibits the documents in the List of Documents dated 24/04/2023. the Plaintiff closed its case. Analysis and Determination 8. 9. I have considered the pleadings and the evidence on record. The following are the issues for determination; a. Whether the Defendant infringed on the Plaintiff’s trademark. b. Whether damages are payable c. Who bears the costs of the application? On the first issue, the use of a registered trademark exclusively is provided for under section 7 (1) of the Trade Marks Act which states as follows; “ Subject to the provisions of this section, and of sections 10 and 11, the registration (whether before or after 1st January, 1957) of a person in Part A of the register as the proprietor of a trade mark if valid gives to that person the exclusive right to the use of the trade mark in relation to those goods or in connection with the provision of any services and without prejudice to the generality of the foregoing that right is infringed by 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 – a. be taken either as being used as a trade mark; b. be taken in a case in which the use is upon the goods or in physical relation thereto or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or as licensee to use the trade mark or goods with which such a person is connected in the course of trade; c. be taken in a case where the use is use at or near the place where the services are available for acceptance or performed or in an advertising circular or other advertisement issued to the public or any part thereof, as importing a reference to some person having the right either as proprietor or as licensee to use the trade mark or to services with the provision of which such a person as aforesaid is connected in the course of business; d. cause injury or prejudice to the proprietor or licensee of the trade mark”. https://new.kenyalaw.org/akn/ke/judgment/kehc/2025/12098/eng@2025-07-07 2

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10. In determining whether there is infringement of a trademark, the conditions as held in the case of Landor LLC and Wpp Luxembourg Gamma Sarl v Wagude Lui t/a Landor & Associates & 2 Others [2019] eKLR as hereunder; “ the conditions to be met in an action for Trade Mark infringement under Section 7 are; a. The Plaintiff is the registered proprietor of the Trade mark b. The alleged infringement was a Mark identical which or so nearly resembles that of the registered Mark so as to be likely to deceive or cause confusion in the course of Trade or in connection with the provision of the services in respect of which it is registered. c. The use of the Mark is without the consent or authority of the Proprietor. d. The use of Mark is such that it is likely to cause injury or prejudice to the proprietor or licensee of the Trade Mark.” 11. It is not in dispute that the Plaintiff is the registered proprietor of the trademark. The Plaintiff produced the Certificate of Registration of trademark dated 06/03/2020. The Plaintiff in meeting the 2nd condition has produced photographs of the 25Kg Tile Adhesive by both the Plaintiff and the Defendant. Both bears the name in bold, TileFix, Ceramic Tile Adhesive. The package resembles each other and the customer is likely to be confused or believe that it belongs to the same company. 12. There is no evidence that the Plaintiff had issued consent to the Defendant to use the said trademark in its products. The Plaintiff stated that it continues to suffer financial and goodwill loss. I find that the Plaintiff has proved that the Defendant infringed on its trade mark. 13. On the issue of damages payable, the Plaintiff stated that it had suffered financial loss. no accounts were given as an indicator of how the Plaintiff’s sales have been affected. Nevertheless, the defendant must have benefitted financially by riding on the Plaintiff’s trademark and goodwill in the market. There being no figures to guide this court on damages payable, a global award of Kshs. 3,000,000 is hereby granted as General Damages for infringement of the registered trademark. 14. On the issue of costs, Section 27 of the Civil Procedure Act decrees that the same follows the event. However, the court retains its discretion to either award or not to award costs. The Defendant having not defended the suit, costs are awarded to the plaintiff. 15. From the above, the Plaintiff’s suit has merits and judgment is entered in its favour against the Defendant as follows; a. An order of permanent injunction against the Defendant is granted as per prayer no. (a)of the Plaint. b. General Damages awarded at Kshs. 3,000,000/= c. Costs of the suit awarded to the Applicant. Orders accordingly. DATED, SIGNED AND DELIVERED AT MOMBASA THIS 7TH DAY OF JULY, 2025. ………………….. F. WANGARI JUDGE https://new.kenyalaw.org/akn/ke/judgment/kehc/2025/12098/eng@2025-07-07 3

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In the presence of; N/A by the Plaintiff N/A by the Defendant Ms. Getrude Court Assistant https://new.kenyalaw.org/akn/ke/judgment/kehc/2025/12098/eng@2025-07-07 4

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