KENYA RULING GIVES PARTIES TO TRADE MARK OPPOSITIONS A SECOND BITE AT THE CHERRY

A recent decision in Kenya means that parties in opposition proceedings can file evidence at any time before a ruling is made, even after all of their submissions have been made, effectively affording parties multiple chances to file evidence.

In Republic v Assistant Registrar of Trade Marks ex parte Strategic Industries Limited and another [2006] eKLR, the High Court in Kenya was petitioned by way of judicial review to determine whether the Registrar of Trade Marks, the Respondent in this case, had correctly exercised its discretion in allowing the filing of further evidence in an opposition to a trade mark application after the parties had made all their submissions and pleadings had closed.

By way of background, the Applicant in the High Court Case, Strategic Industries Limited (“Strategic”), had formally opposed the registration of the trade mark FREEDOM which was applied for in the name of Rebecca Fashion (Kenya) Limited (“Rebecca”), which was also an interested party to the proceedings before the High Court. After the Registrar of Trade Marks had issued confirmation of a date for handing down the decision in the opposition, Rebecca made application in terms of Rule 52 of the Trade Mark Rules for leave to adduce further evidence in support of its case. Rule 52 states that in any proceedings before the Registrar, he may at any time give leave to either party to lead any evidence upon such terms as to costs or otherwise as he may think fit.

Naturally, the application was opposed by Strategic. However, the Registrar of Trade Marks found in favour of Rebecca and granted it leave to file additional evidence. The High Court case emanated from this decision of the Registrar of Trade Marks.

Strategic argued that the Respondent could only exercise its discretion in terms of Rule 52 to allow for the filing of further evidence before the hearing or adjudication of a matter. Rebecca conversely made the arguments that:

  1. the filing of further evidence at that stage did not determine the parties’ rights, as Strategic would still have the opportunity at the main proceedings to contest the evidence filed;
  1. at the conclusion of the proceedings, Strategic still had the right to appeal against the decision reached in the opposition based on points of law; and
  1. if the High Court interfered with the decision of the Registrar of Trade Marks at that point, it would be interfering with the powers of an independent party and it would effectively be operating as a trial and appeal court presiding over the same issues.

The High Court agreed with the arguments made by Rebecca and found that Rule 52 allowed the Registrar to grant leave to file additional evidence at any time. Indeed, this is the wording of Rule 52. In addition, it held that the issue whether the Registrar had exercised its discretion correctly was one for determination by appeal rather than judicial review as it goes to the merit of the decision. Judicial review, the court found, rather dealt with the lawfulness of a decision. The decision confirms the position that a court on judicial review will not interfere in ongoing proceedings before an administrative body, unless those proceedings are unlawful.

The decision also extends the interpretation of Rule 52 of the Trade Mark Rules to mean that, in matters before the Registrar of Trade Marks, parties can make application to file further evidence even after final submissions have been made, but provided that a ruling has not yet been issued.

By

Kelly Thompson | Partner

Kim Rampersadh | Senior Associate

KELLY THOMPSON

Partner & Chairperson of Trade Mark Litigation
Trade Mark Attorney

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KIM RAMPERSADH

Senior Associate
Attorney

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