IP Case Law library

City Eye Advertising Agency v Mwenge Miraa Sacco Ltd

 Facts 

City Eye Advertising Agency, the Plaintiff, filed an application seeking a permanent injunction to restrain Mwenge Miraa Sacco Ltd (the Defendant) from infringing on its intellectual property rights. The Plaintiff claimed to be the registered proprietor of Trademark No. 73967 in Class 35 (Branding) for “Miraa (Khat) Advertising” and alleged that the Defendant had infringed this trademark by branding its offices with a device of miraa. The Plaintiff sought to enforce its exclusive rights under the Trade Marks Act, arguing that the Defendant’s use of the trademark without consent constituted an infringement. 

In response, the Defendant raised a preliminary objection, arguing that the High Court lacked jurisdiction to hear the matter because it involved intellectual property rights, which should be addressed by the Industrial Property Tribunal. The Defendant also contended that the miraa device could not be trademarked under the Plant Breeders Rights, claiming that it did not meet the threshold for such protection. 

Issue 

1. Whether the High Court has jurisdiction to hear and determine a trademark infringement case, or should the matter be addressed by the Industrial Property Tribunal?
2. Whether the miraa device be trademarked, or does it fail to meet the threshold for plant variety protection under the Plant Breeders Rights?

Rule
 
The jurisdiction of the High Court and the Industrial Property Tribunal is governed by the relevant statutes:
 

• Industrial Property Act: Governs patents, utility models, technovations, and industrial designs, and establishes the Industrial Property Tribunal to handle disputes related to these matters.
• Trade Marks Act: Governs the registration and protection of trademarks in Kenya. Disputes arising under this Act are within the jurisdiction of the High Court.

Analysis
 
The court first addressed the issue of jurisdiction, emphasising that jurisdiction is a fundamental question that must be resolved before considering the merits of any case. The Defendant argued that the matter should be heard by the Industrial Property Tribunal, as it concerned intellectual property rights. However, the court noted that while the Industrial Property Act governs patents, utility models, and industrial designs, it does not cover trademarks. The Trade Marks Act, which is a specialised statute, provides the legal framework for handling trademark disputes and explicitly grants jurisdiction to the High Court.
 
The court also considered the second limb of the Defendant’s objection, which argued that the miraa device could not be trademarked because it did not meet the threshold for plant variety protection under the Plant Breeders Rights. The court found that this argument required factual evidence and could not be resolved as a pure point of law in a preliminary objection.
 
Ultimately, the court held that the Trade Marks Act is a complete and self-contained code governing trademarks in Kenya. As such, the High Court has the jurisdiction to hear and determine disputes arising under the Trade Marks Act. The court dismissed the preliminary objection, finding that it was based on a misconception of the applicable law.
 
Conclusion
 
The court dismissed the preliminary objection, ruling that the High Court had jurisdiction to hear and determine the trademark infringement dispute under the Trade Marks Act. The court also dismissed the Defendant’s argument regarding the non-trademarkability of the miraa device, stating that this issue required factual evidence and could not be determined at the preliminary stage. The objection was dismissed with costs awarded to the Plaintiff.
 
Judgement here.