KENYA: BOWMANS SECURES A LANDMARK WIN FOR RENOWNED GLOBAL DRUG MANUFACTURER, CIPLA LIMITED
Bowmans is pleased to announce that our Litigation and Dispute Resolution Team in Nairobi, in collaboration with our IP & Technology practice, have secured a landmark win for Cipla Limited (“Cipla”) in a trademark and drug ownership tussle against its former distributor, Lords Healthcare Limited (“Lords”).
The litigation that spanned over 7 years in the High Court saw the Bowmans team aggressively defend a total of 183 of Cipla’s drug registration certificates that Lords claimed to own, as well as its 53 global trademarks that Lords had illegally registered as its own in the course of its relationship with Cipla.
In the Judgment, the Hon. Justice D. Majanja confirmed that the relationship between Cipla and Lords was that of a principal-agent, and not co-principals as Lords had purported, and that Cipla is the sole legal proprietor and owner of the drugs. Consequently, Lords has been directed to recall from the Kenyan Market all the pharmaceutical products that it has been trading with using Cipla’s drug registration certificates.
On the trademarks’ row, Lords has been found liable for passing off and infringing Cipla’s trademark rights having registered several trademarks that are similar/identical to Cipla’s. More importantly, Lords has been permanently stopped from laying claim to the “Cipla” trademark that it had registered under a different class. Had Lords been successful in its claim, Cipla may have been constrained to change its global name.
The decision from the High Court is significant in clarifying the ownership rights conferred to manufacturers of drugs and their local technical representatives in Kenya arising from the registration of drugs, as well as trademark rights, especially between foreign principals and their trading agents in Kenya.
The High Court Judgment can be accessed here.