L.G. HARRIS & COMPANY LIMITED v L.G. HARRIS & CO. (EAST AFRICA) LIMITED [2010] eKLR

Key Facts

Issues

• The court also needed to decide who should be responsible for the costs of the litigation between the parties.
• The court was asked to determine whether the Defendant infringed the Plaintiff's trademark 'Harris' by continuing to use it after the cancellation of the license agreement.

Holdings

• The court issued an injunction restraining the defendant from manufacturing, selling, supplying, or distributing products bearing the HARRIS trade name or confusingly similar items.
• The defendant was ordered to pay the plaintiff the costs of the suit.
• Ordered destruction of all paint brushes and tools bearing the HARRIS trademark and verification that no such items remain in the defendant's possession.
• The court ordered an enquiry into damages or an account of profits to be paid by the defendant to the plaintiff.
• The defendant was ordered to change its name within six months to remove 'L.G. Harris' due to trademark infringement.

Remedies

• The costs of the suit were awarded to the Plaintiff.
• All paint brushes, decorators' tools, and household brushes bearing the HARRIS trademark or infringing representations must be destroyed upon oath.
• An enquiry into damages or an account of profits was ordered, with payment of all sums found due.
• The Defendant was ordered to change its name within six months to remove 'L.G. Harris' due to trademark infringement.
• An injunction was issued to restrain the Defendant from manufacturing, selling, supplying, or distributing any product bearing the HARRIS trade name or confusingly similar products.

Legal Principles

• The court emphasized that trademark rights are statutory and enforceable under the Trade Marks Act (Cap 506). The exclusive right to use a registered trademark was central to the judgment, with infringement determined by unauthorized use causing deception or confusion.
• The court applied the principle of strict liability in trademark infringement, holding that the Defendant's knowledge, intention, or motive were irrelevant to the determination of infringement, as registration of a trademark confers exclusive statutory rights. This was supported by references to Pharmaceutical Manufacturing Co. vs. Novelty Manufacturing Ltd. and British Sugar Plc v James Robinson & Sons Ltd.
• The Plaintiff bore the burden of proof to demonstrate both trademark infringement and passing off. The court found the Plaintiff successfully discharged this burden by showing the Defendant continued using the 'Harris' trademark after cancellation of the licence agreement, leading to market confusion.

Precedent Name

• Pharmaceutical Manufacturing Co. vs. Novelty Manufacturing Ltd.
• British Sugar Plc v James Robinson & Sons Ltd.
• Brook Bond Kenya Limited vs Chai Limited
• Thomas Bear & Sons (India) Ltd vs. Prayag Norain Jegennath

Cited Statute

• Trade Marks Act (Cap 506) Laws of Kenya
• Standards Act (Cap 496) Laws of Kenya

Judge Name

Passage Text

• The court ordered an injunction to restrain the Defendant from using the 'HARRIS' tradename and mandated a name change within six months to remove 'L.G. Harris' due to public interest concerns.
• The court found that the Defendant continued to manufacture and use the Plaintiff's trademark 'Harris' after the user agreement was cancelled, leading to infringement and passing off.
• The court referenced the Brook Bond case principle that 'marks with many differences may yet have an element of similarity which may cause deception' when evaluating the resemblance between the parties' brushes.