Hygiene Bins Limited v Sanitam Services (E.A) Ltd [2015] eKLR

Key Facts

Issues

• Whether the balance of convenience favored granting the injunction to Sanitam over allowing Hygiene Bins to continue operations pending trial.
• Whether Sanitam demonstrated a prima facie case of patent infringement by Hygiene Bins under the Industrial Property Act, particularly regarding the foot-operated sanitary bin design and operation.
• Whether Sanitam established that it would suffer irreparable damage if the injunction to restrain Hygiene Bins from using its patented sanitary bin was not granted.

Holdings

• The Court of Appeal acknowledged the High Court's definitive language in the ruling as potentially misleading, given the interlocutory nature of the application. However, it clarified that such language did not prejudice the case, as the findings remained prima facie and not final. The court reiterated that the interlocutory injunction was granted to protect the patent pending trial.
• The Court of Appeal determined that the High Court Judge properly exercised her discretion in granting the injunction, as Sanitam's patent was valid and the infringement was demonstrated. The court emphasized that the principles for granting an interlocutory injunction (prima facie case, irreparable damage, balance of convenience) were appropriately applied, and the respondent's statutory rights under the Industrial Property Act were protected.
• The appellate court rejected the argument that the High Court misapplied the Giella v Cassman Brown principles, stating that the learned Judge's findings were based on the evidence and aligned with established legal standards. It was held that the respondent's right to an injunction under Section 55 of the Industrial Property Act was enforceable without requiring explicit proof of irreparable damage in this instance.
• The court highlighted that the parties had not progressed the High Court case with urgency, despite the interlocutory injunction being in place since 2010. This was viewed as a failure to address the matter efficiently, though it did not affect the appeal's outcome.
• The Court of Appeal dismissed the appeal with costs, affirming the High Court's ruling that Sanitam demonstrated a prima facie case of patent infringement by Hygiene Bins. The appellate court upheld the High Court's exercise of judicial discretion and confirmed the validity of Sanitam's patent No. AP773 under the Industrial Property Act. It was noted that the High Court's definitive language in the ruling, while unfortunate, did not alter the prima facie findings. The court also observed that neither party had taken steps to expedite the disposal of the High Court case.

Remedies

• The court awarded costs to the respondent (Sanitam Services) following the dismissal of the appellant's appeal. The costs were awarded for the application and the appeal proceedings.
• The court granted an injunction to restrain the appellant from infringing the respondent's registered patent No. AP773, pending the trial. The injunction was issued to protect the respondent's patent rights under sections 54 and 55 of the Industrial Property Act.

Legal Principles

Precedent Name

• Peters v Sunday Post Ltd
• United India Insurance Co. Ltd v East African Underwriters (Kenya) Ltd
• Sanitam Services (EA) Ltd v Rentokil (K) Ltd & Another
• Giella v Cassman Brown & Company Limited

Cited Statute

Judge Name

• F. Sicahle
• E.M. Githinji
• F. Azangalala

Passage Text

• For those reasons I find and hold that the plaintiff/applicant has made out a prima facie case entitling it to the grant of the orders sought and so that its patent No. AP773 may be protected by the court, I grant orders in terms of prayer 1. The plaintiff will have the costs of the application. It is so ordered.
• Having examined the two bins in question and following all the observations that we have recorded above, we concluded that the exhibit bin 'HYGIENE' marketed in Kenya by 'HYGIENE BINS LIMITED' is not different, in design and operation of its opening mechanism, from the bin 'Sanitam Monny' for which Sanitam Services (EA) Limited holds a patent as per the patent document No. AP773.
• In the matter before us, we have not detected any of the above factors which would persuade us to interfere with the learned Judge's exercise of discretion.