Patents
Naili East Africa Limited v Samuel Kariuki & another [2014] eklr
Facts
Naili East Africa Limited (the Plaintiff) applied for an injunction to restrain the Defendants, Samuel Kariuki and Patrick Odhiambo, from infringing on its patent rights related to an aquatic plant removal method and apparatus. The Plaintiff claimed that the Defendants, operating under the name Seaweed Environmental Restoration Limited, demonstrated the patented invention without authorisation. The Plaintiff argued that the Defendants' actions constituted an infringement of its rights and sought injunctive relief under the principles established in Giella v. Cassman Brown [1973] E.A 358. The Defendants opposed the application, arguing that the Plaintiff was not the registered owner of a patent but merely an applicant for registration. The Defendants also raised jurisdictional issues, claiming that the Industrial Property Tribunal had exclusive jurisdiction over the matter.
Issue
Does the High Court have jurisdiction to hear and determine the application for an injunction concerning a patent dispute?
Has the Plaintiff satisfied the threshold for granting an injunction under the principles established in Giella v. Cassman Brown?
Rule
The court referred to the Industrial Property Act, particularly sections 55, 105, 106, and 113, which establish the Industrial Property Tribunal as the appropriate forum for enforcing patent rights, including the issuance of injunctions. The court also considered the principles for granting injunctions as established in Giella v. Cassman Brown [1973] E.A 358.
Analysis
The court first addressed the issue of jurisdiction, emphasising that jurisdiction is fundamental to the adjudication of any legal dispute. The Defendants argued that the Industrial Property Tribunal, established under section 113 of the Industrial Property Act, had exclusive jurisdiction to hear cases involving patent infringements. The court agreed, noting that section 106 of the Act specifically grants the Tribunal the authority to issue injunctions and other reliefs in relation to patent or utility model disputes. The court observed that the Plaintiff was only an applicant for a utility model certificate and had not yet been granted a patent or utility model certificate. As such, the Plaintiff had no enforceable rights under the Act, and any claims related to the invention should be directed to the Tribunal.
The court further noted that section 55(c) of the Industrial Property Act provides for the protection of an invention claimed in a published application, allowing the applicant to seek compensation if the invention is used without authorisation. However, the court held that the Tribunal was the appropriate forum to determine such claims, not the High Court.
Given that the Plaintiff had not yet been granted a patent or utility model certificate, the court found that the Plaintiff lacked the standing to seek injunctive relief. Additionally, the court declined to exercise jurisdiction over the matter, directing that the Plaintiff should pursue its claims before the Industrial Property Tribunal.
Conclusion
The court dismissed the Plaintiff’s application for an injunction, holding that it lacked jurisdiction to hear the matter. The court ruled that the Industrial Property Tribunal was the appropriate forum for resolving the dispute, given that the Plaintiff had not yet been granted a patent or utility model certificate. No order as to costs was made.
Ruling available here.