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Fineline v Safepak: A Tale of Two Bottles

10 January 2017
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In Kenya, the biggest challenge to aggrieved parties who wish to challenge registered designs on substantive grounds via revocation has been the existence of a number of decisions by the Industrial Property Tribunal that in short indicated that it would be impossible to do so if the design had been on the register for 9 months.

We are proud to notify you that our IP litigation team  has been involved in a mater in Kenya that has now changed this position.

The Industrial Property Tribunal of Kenya in a precedent setting case has ruled that a person would have a right to commence a revocation or invalidation action to challenge an industrial design even after the lapse of the statutorily provided time limitation of 9 months under the Industrial Property Act.

In a unanimous decision delivered on 9th December 2016, the Tribunal, in  agreement with the legal arguments made by our IP litigation team,  allowed an application by Fineline Industries Limited for extension of time within which to bring an action for the revocation/invalidation of Industrial Design No. 646 registered at the Kenya Industrial Property Institute in favour of Safepak Limited. Please note that our extension of time application related to an enlargement of time of 36 months. The Tribunal , guided by submissions, ruled that a person who seeks the exercise of the Tribunal’s discretion in that regard would need to show genuine reasons for the delay in bringing the revocation or invalidation action.  The Tribunal agreed that Fineline had acted with appropriate dispatch in the circumstances of the case in bringing the application for extension of time and there were genuine reasons why the application for revocation was not filed within the 9 month period. Additionally the Tribunal agreed that there were fundamental issues raised in the prospective revocation/invalidation proceedings that gave basis for it to exercise discretion to extend time.

The Tribunal departed from its previous decisions in which it had ruled that it did not have the jurisdiction to extend the 9 month time limit provided under the statute. In making the decision it was acknowledged that that it would be unfair to lock out persons especially foreign entities with similar industrial design registrations from around the world from commencing revocation/invalidation actions against industrial designs registered in Kenya on the basis of the 9 month time limit provided under the Industrial Property Act.

The decision means that in accord with international best practice, a person may bring an action seeking revocation/invalidation of an industrial design on the Kenyan register beyond the statutory period of 9 months provided sufficient or bona fide reason for the delay is shown on an extension of time application that must be lodged before the filing of the revocation action. The innovation by the IP litigation team of filing both applications simultaneously ( for extension and for revocation) supported by a stand alone affidavit for the extension which had not been done before to enable argument on the merits carried the day.

Fineline had brought the revocation/invalidation action under Section 103(1) & (2) of the Industrial Property Act. The Tribunal agreed with Fineline’s arguments that these two provisions were distinct rather than continuous with Section 103(1) being without a time limit and Section 103(2) requiring that a revocation action be brought within 9 months after registration of the industrial design (hence the extension of time application).

Safepak has filed a design infringement case before the High Court which has been stayed pending the determination of the substantive revocation proceedings by the Industrial Property Tribunal.

Bowmans Coulson Harney represented Fineline.

For more details please contact the team involved in this matter : John Syekei – Partner, Anthony Njogu – Partner, Cecil Kuyo – Senior Associate and Effie Omondi –Associate.