Vermont Flowers (EPZ) Limited v Waridi Creations Limited [2014] eKLR

Key Facts

Issues

• The first issue addressed whether the High Court of Nairobi has jurisdiction to handle a patent infringement suit under the Industrial Property Act, particularly section 106, which vests exclusive jurisdiction in the Industrial Property Tribunal for such matters. The court was asked to determine if combining patent and copyright claims in the plaint rendered the cause of action inconsistent, thereby requiring referral to the appropriate tribunal.
• The second issue concerned the Applicant's capacity to pursue copyright infringement claims as an exclusive licensee. The court examined whether the Applicant adequately pleaded their exclusive licensee status in the plaint, provided required notice to the copyright owner under section 34(2) of the Copyright Act, and included necessary documentation such as a letter of verification from the Board for non-domestic copyrights. The Applicant's failure to meet these procedural requirements was central to the objection.

Holdings

• The court upheld the preliminary objection regarding the jurisdiction of the Industrial Property Tribunal under the Industrial Property Act. It determined that the Tribunal has statutory jurisdiction to handle patent infringement claims and referred the relevant disputes to the Tribunal. The court emphasized that relief for patent matters must be sought through the Tribunal, not the High Court.
• The court dismissed the copyright claims due to the applicant's failure to properly plead their status as an exclusive licensee and the absence of required documentation, including a letter of verification from the Board and notice to the copyright owner. The application for injunction based on copyright was found to lack legal standing.

Remedies

• The court dismissed the prayers founded on exclusive licensee and copyright rights, citing lack of proper pleading in the plaint and non-compliance with section 34(2) of the Copyright Act requiring notice to the copyright owner.
• The court referred the disputes on patent or design to the Industrial Property Tribunal for relief, as the Tribunal has statutory jurisdiction over such claims under the Industrial Property Act.

Legal Principles

Precedent Name

• MUKISA BISCUITS MANUFACTURING CO. LTD v WEST END DISTRIBUTOR LTD
• Timoi Farms and Estate Limited vs. Kipngeno A. Ngeny
• ApexCreative Ltd vs. Michael Odhiambo Obera
• Equity Bank Ltd Re Brian Yongo and Neptuen Credit Management Limited
• Oraro Vs Mbajja

Cited Statute

• Copyright Act
• Industrial Property Act
• Companies Act
• Civil Procedure Act

Judge Name

Passage Text

• The Applicant filed an application for injunction and Anton Piller Orders on the basis that he is the registered copyright owner but again it emerges from the last filing, as an exclusive licensee... there is not specific pleading in the plaint on exclusive licensee and the specific copyrights on which the licence is granted; yet the application and the affidavits filed thereto introduces exclusive licensee or assignment.
• The Applicant made an application for grant of patent through application No KE/P/2012001715, paid the relevant fee and notification of filing date of the application was given by the Managing Director of the Kenya Industrial Property Institute tobe 3/2/2012. The Applicant, therefore, is covered by the jurisdiction of the Tribunal in the Industrial Act and they should refer the claims which form part of the application for grant of patent to the Tribunal.
• On the basis of the law and the reasons given above, I hereby uphold the preliminary objections but in respect of the application only... the other prayers in the application dated... which are founded on exclusive licensee and copyright lack a foot on which to stand and are dismissed.