Proto Energy Limited v Ota Gas Refill Limited

6. The Defendant opposed the Motion through a replying affidavit sworn on 1st March 2025 by Adan Hassan Mohamed, contending that it is a duly registered company operating lawfully under its own trade name and that no infringement has occurred. 7. The Defendant further deponed that its branding was independently developed and that no evidence of actual confusion has been demonstrated. 8. The application was canvassed by way of written submissions. The Plaintiff’s submissions are dated 4th April 2025, while the Defendant’s submissions are dated 11th April 2025. Analysis and Determination 9. Having considered the pleadings, affidavits and submissions, the Court is of the view that the sole issue for determination is whether the Plaintiff has satisfied the legal threshold for the grant of interlocutory prohibitory and mandatory injunctions. 10. The principles governing the grant of interlocutory injunctions are well settled and were stated in Giella v Cassman Brown & Co. Ltd [1973] EA 358, namely: a. existence of a prima facie case with a probability of success; b. likelihood of irreparable injury not compensable by damages; and c. where in doubt, determination on a balance of convenience. 11. For mandatory injunctions at the interlocutory stage, the Court must first be satisfied that the case is clear and exceptional, before the same is granted, as stated in Kenya Breweries Ltd v Washington Okeyo [2002] eKLR. 12. Under Sections 7 and 8 of the Trade Marks Act (Cap 506), registration of a trademark confers exclusive rights, and infringement occurs where an identical or deceptively similar mark is used in a manner likely to cause confusion. 13. As to whether a prima facie case has been established by the Plaintiff, Mrao Ltd v First American Bank of Kenya Ltd & 2 Others [2003] KLR 125 defined a prima facie case as one which, on the material presented, discloses the apparent infringement of a right. 14. In the present case, it is not disputed that the Plaintiff is a licensee of the registered trademark “OTOGAS.” As established above, Section 7 of the Trade Marks Act (Cap 506), grants the proprietor of a registered trademark the exclusive right to the use of that mark. 15. The Defendant argued that its name, "OTAGAS", is a distinct legal entity registered under the Companies Act. However, the Defendant’s reliance on its company registration does not afford a defence to trademark infringement. Under Section 8 of the Trade Marks Act, infringement occurs when a person uses a mark identical with or so nearly resembling the registered mark as to be likely to deceive or cause confusion in the course of trade. 16. The Court notes the phonetic similarity between the Plaintiff’s “OTOGAS” and the Respondent’s “OTAGAS,” the similarity in colour presentation, and the fact that both parties operate in the same locality and industry sector. 17. At this interlocutory stage, the Plaintiff is only required to demonstrate a likelihood, not proof, of confusion. The proximity of operations and resemblance of the marks are sufficient to meet that threshold. https://new.kenyalaw.org/akn/ke/judgment/kehc/2026/6751/eng@2026-04-30 2

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18. As was held in Reckitt & Colman Products Ltd v Borden Inc [1990] 1 All ER 873, the Plaintiff needs only to show that the Defendant’s actions are likely to lead the public to believe that the goods or services offered by the Defendant are those of the Plaintiff. 19. Accordingly, the Court is therefore satisfied that the Plaintiff has established a prima facie case with a probability of success. 20. On irreparable harm, the Plaintiff has contended that the continued use of a confusingly similar mark will lead to brand dilution and loss of goodwill. 21. Courts have consistently held that harm arising from trademark infringement and public confusion is not easily quantifiable. In Vans Inc v Jitendra Devchand Shah [2018] eKLR, the court observed that in intellectual property matters, the damage to a brand's reputation and the "confusion in the minds of the public" are often incapable of precise calculation. 22. Similarly, in Olympic Sports House Ltd v School Equipment Centre Ltd [2012] eKLR, the Court held that: “ In the present case, I believe that the Defendant is in breach of Section 7 of the Act. Even if it can compensate the Plaintiff with damages, I hold the view that an injunction should still issue to restrain the continued breach of the law. I therefore do not need to address the issue as to whether damages are adequate. However, if my view was to be sought, I hold the view that it would be very difficult to quantify the damages the Plaintiff will suffer as a result of the continued infringement of its trademark. Trade marks as are patents, are properties that should be constitutionally protected. To quantify the loss of their invasion is quite difficult and therefore hold that damages will not be an adequate remedy to compensate the Plaintiff.” 23. The Court concurs with the above decisions and is accordingly persuaded that damages would not be an adequate remedy should infringement continue pending trial. 24. Where the first two limbs (prima facie case and presence of irreparable harm) are in doubt, the court must decide the matter on the balance of convenience. In Nguruman Limited v Jan Bonde Nielsen & 2 others [2014] eKLR, the Court of Appeal clarified that the balance of convenience tilts in favour of the party who stands to suffer greater harm. 25. In this case, it is apparent from the record that if the injunction were to be denied, the Plaintiff risks continued erosion of its brand and goodwill. On the other hand, if the injunction is to be granted, the Defendant will be required to rebrand, which is a quantifiable and compensable loss. 26. Moreover, it is evident from the record that the Plaintiff has invested in the "OTOGAS" brand for approximately 8 years. The Defendant’s station is a recent entry (December 2024). The court finds that the risk of the Plaintiff losing its established market share and reputation outweighs the temporary business disruption the Defendant might face by changing its branding. 27. The inconvenience to the Defendant arising from rebranding is compensable, whereas continued erosion of the Plaintiff’s goodwill is not. The balance of convenience, therefore, tilts in favour of the Plaintiff. Whether a mandatory injunction should issue 28. The Plaintiff seeks a mandatory injunction compelling the Defendant to remove infringing branding. https://new.kenyalaw.org/akn/ke/judgment/kehc/2026/6751/eng@2026-04-30 3

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29. The principles governing such relief were set out in Kenya Breweries Ltd v Washington Okeyo [2002] eKLR, where the Court held that a mandatory injunction may be granted where the case is clear; the act complained of is simple and capable of remedy, and the Defendant has attempted to “steal a march” on the Plaintiff. 30. Additionally, in Locabail International Finance Ltd v Agro-Export [1986] 1 ALL ER 901, it was held that a mandatory injunction at the interlocutory stage is an exceptional remedy granted only in clear and exceptional circumstances where the court has a high degree of assurance that the order would be justified at trial. 31. In the present case, while cognizant of the fact that the Court is not to make a final determination at this stage, the Court has already noted that the similarity of the marks is evident. It is also not disputed that the Defendant commenced operations long after the Plaintiff’s trademark registration, and that the Defendant operates in close proximity to the Plaintiff. There is, therefore, evidence of likely confusion and misrepresentation. These demonstrate that special circumstances exist, warranting the grant of limited mandatory relief. 32. In light of the foregoing, the Court finds that the Plaintiff’s application dated 13th January 2025 is merited. Accordingly, the Court makes the following orders: 33. i. Pending the hearing and determination of the main suit, a temporary injunction is hereby issued restraining the Defendant, whether by itself, its directors, or agents, from using the name "OTAGAS" or "OTA GAS" or any other mark deceptively similar to, or mimicking the Plaintiff’s registered trademark "OTOGAS". ii. A mandatory injunction is hereby issued directing the Defendant, within 30 days of this Ruling, to remove, take down, or rebrand any signage, materials, colours, or items bearing the impugned name or marks. iii. The Plaintiff shall file an undertaking as to damages within fourteen (14) days of this Ruling. iv. Costs of the application shall be in the cause. It is so ordered. DATED, SIGNED, AND DELIVERED AT NAIROBITHIS 30TH DAY OF APRIL 2026 HON. MR. JUSTICE MOSES ADO JUDGE OF THE HIGH COURT In the presence of: C/A – Moses Tugee.………………….for the Applicant N/A….……………….for the Respondent 5 | Page https://new.kenyalaw.org/akn/ke/judgment/kehc/2026/6751/eng@2026-04-30 4

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