1. The Petition dated 5th March 2024, is supported by the 1st Petitioner’s affidavit in support of even date and a further supplementary affidavit dated 31st October 2024.
2. The gist of the Petition is that the investigation and intended prosecution against the Petitioners by the Respondents was instigated by the Interested Party hence is an abuse of the criminal justice system, the statutory mandates of the Respondents and a violation of the constitution in particular, Articles: 10(1), (2), 25 (a) and (c), 27 (1) & (2), 28, 29 (c) & (d), and 47 of the Constitution.
3. Accordingly, the Petitioners seek the following reliefs against the Respondents:
a) A declaration be issued that the 1st and 2nd Respondents conduct and actions jointly and severally contravene the Constitution and/or are likely to contravene or infringe upon the Petitioner's fundamental rights and freedoms guaranteed under Article 10(1), (2), 25 (a) and (c), 27 (1) & (2), 28, 29 (c) and (d), and 47, of the Constitution.
b) A declaration be issued that the Respondents' conduct and actions which are complained of in the Petition, jointly and/or severally, singularly and/or cumulatively against the Petitioner are oppressive, unfair, unreasonable, irrational, illegal and an abuse of power and the criminal justice system and process.
c) A declaration be issued that the Respondents investigations jointly and/or severally, singularly and cumulatively into the unknown allegations by the Interested party are tainted with illegality, mala fides and are being and/or have been conducted with and/or for an ulterior motive or extraneous purpose.
d) An order of prohibition directed to all the Respondents jointly and severally prohibiting any and all of them from carrying out and/or proceeding with any further and/or investigations into or in connection with the baseless allegations by the Interested Party against the Petitioner.
e) An order of prohibition directed to all the Respondents jointly and severally prohibiting any and all of them from reopening or purporting to reopen, mounting, bringing, instigating, carrying out and/or proceeding with any criminal proceedings or charges against the Petitioners in connection with the Interested Parties' baseless allegations against the Petitioner.
f) Any other relief that this Court may deem fit and just to grant in the interest of justice.
Petitioners’ Case
4. The 1st Petitioner states that he and the 2nd Petitioner are the directors of Nairobi Beauty World Limited.
5. For context, he depones that the trademark was originally registered on 3rd August 2011 under Class 3. They operated with the trademark until 2018 when they discovered that the Interested Party was also using the same trademark. As a result, the Petitioners sought to have that trademark deregistered and this was effected in March 2019.
6. Covertly, the Interested Party applied to have the Petitioners’ trademark deregistered soon thereafter and even registered the trademark under Class 29.
7. This was done without the Interested Party serving the deregistration proceedings that were undertaken before the Kenya Industrial Property Institute (KIPI). Instead, the matter proceeded ex parte and a decision was made without the Petitioners being granted an opportunity to be heard.
8. Subsequently, the Interested Party illegally assumed their trademark and sought to have persons utilizing the trademark to be investigated by the 1st Respondent who the Petitioners contend is keen to see Interested Party taken through a malicious prosecution despite being aware of the pending HCCC Case No. E014 of 2023 Nairobi Beauty World Limited Vs Sime Derby Oils Professional SDN. BHD.
9. The Petitioner avers that in the said civil suit; they were granted leave by Justice Asenath Ongeri on 24th September 2024 to file an Appeal against the decision of the Registrar of Trademarks. They filed the appeal in HCOMMA No. E288 Nairobi Beauty World Limited vs Sime Darby Oils Professionals SDN.BHD which is ongoing.
10. He avers that despite this, the 1st Respondent went ahead instituted prosecution vide file number ACA/HQ/ENF/IPRC/69/2023 which case was set to begin on 8th March 2024.The Petitioners contend that the 1st Respondent is working in collaboration with the Interested Party to frustrate their right to be heard in the illegal criminal proceedings.
11. He further alleges that as a result of the Interested Party’s actions, their property was seized by the 1st Respondent yet the same is not counterfeit as purported.
12. It is the petitioner’s case therefore that the Respondents are working together with the Interested Party to violate their rights and have exercised their statutory power irrationality and unreasonably. The Petitioners are aggrieved that the 1st Respondent is also working in cohorts with the Interested Party to aid it take over their established brand and trademark, which they built for over 8 years.
1st Respondent’s Case
13. The 1st Respondent through its Inspector Collins Okoth filed its Replying Affidavit sworn on 15th March 2024.He depones that the Interested Party lodged its complaint on 11th December 2023 concerning the impugned trademark through its agent.
14. He avers that the Interested Party is the registered owner in classes 3 and 29 of the Nice Classification for the trade mark ‘C.B.C. Brand’ (word and device) under certificate for trade mark no. 111560 in class 3 of the Nice Classification registered in 2020 and under certificate for trade mark no. 41399 in class 29 of the Nice Classification registered in 1994.He contended that the Interested Party has used this trademark since then within Kenya.
15. He depones that on 25th March 2020, the Interested Party sought to further register the trademark with the Registrar of Trademarks. This application was however rejected owing to the reason that the Petitioners’ company had registered ‘C.B.C. Pure White Coconut Oil’ and been issued with the Certificate of Trade Mark No.72138. In reaction to this, he avers that the Interested Party sought to have the same deregistered.
16. In a Ruling by the Registrar of Trade Marks dated 9th April 2021, the Petitioners’ trademark was deregistered and expunged. Soon thereafter, the Interested Party was issued with a Certificate of Registration for trademark No.111560.Considering this, it is stated that contrary to the Petitioners allegations, they do not have a registered trademark.
17. In light of the foregoing, the 1st Respondent maintained that the Petitioners allegations are false as the impugned trademark was lawfully expunged in a process where they fully participated. He further disputes the existence of HCCC Case No. E014 of 2023, Nairobi Beauty World Limited v. Sime Derby Oils Professional SDN.BHD.
18. Additionally, he avers that the alleged deregistered trademark effected through the letter dated 12th March 2019 relates to a different company, that is, Coconut Best Limited which has no relationship with the Interested Party.
19. It is asserted that the 1st Respondent’s investigations unearthed that the Interested Party’s complaint had probable cause and further complied with the provisions of the Anti-Counterfeit Act. It is stated that the 1st Respondent has a statutory mandate to investigate criminal complaints relating to infringement of intellectual property rights and in the exercise of that mandate it cannot be said that it acted illegally.
20. He further depones that the investigations established evidence of counterfeiting by the Petitioners through their company.
21. As a result, the 1st Respondent seized the items on 18th December 2023 which if ascertained, the 1st Respondent will recommend the same to the 2nd Respondent for prosecution.
22. On this premise, the 1st Respondent averred that in carrying out its mandate, it did not violate the Petitioners’ rights as alleged nor did it act maliciously as alleged. Further, that the Petition is premature as the 1st Respondent has not even recommended charges to the 2nd Respondent and neither has the 2nd Respondent approved any prosecution.
2nd Respondent’s Case
23. In reaction to the Petition, the 2nd Respondent filed its Grounds of Opposition dated 4th April 2024 on the basis that:
i. The instant Petition is misconceived, bad in law and incompetent to the extent that it fails to give the particulars of the threat or the infringement of the Applicants' constitutional rights and freedoms by the Respondents.
ii. Pursuant to Article 157, the 2nd Respondent is the only institution with the constitutional mandate to institute and undertake criminal proceedings and the exercise of this mandate cannot be interfered with unless in exceptional and clearest circumstances where there is infringement of fundamental freedoms, violation of the constitution and the law or where there is abuse of the legal process.
iii. The 2nd Respondent in exercise of his Constitutional mandate conferred by Article 157 of the Constitution will make a decision to charge the Petitioner based on sufficiency of evidence and the public interest underlying prosecution of cases.
iv. The Petitioners herein misapprehended the provisions of Article 157 and Article 158 of the Constitution as read with the Office of the Director of Public Prosecutions Act, 2013 to the extent that they seem to imply that the 2nd Respondent is involved in the investigations and arrests of suspects.
v. Pursuant to Section 193A of the Criminal Procedure Code, criminal and civil cases can proceed concurrently and nothing prohibits the 2nd Respondent from preferring criminal charges against the Petitioner where criminal culpability has been established based on evidence placed before the Respondent.
vi. The Petitioner discloses no cause of action against the 2nd Respondent as the matter relates to the conduct of the 1st Respondent and not the decision to charge the Petitioner/ prosecutions has been made.
vii. The institution of the instant Application and Petition is premature since no arrests and/or preference of any charges against the Petitioners has happened, accordingly, the Petitioners' apprehension is unfounded.
viii. The instant Petition is frivolous, vexatious and amounts to an abuse of the court process as it seeks to have the Respondents restrained from performing their respective constitutional duties and mandates.
Interested Party’s Case
24. The Interested Party filed its Replying Affidavit through its representative, Abdulkadir Warsame sworn on 11th April 2024.
25. He depones that on 14th April 2020, the Interested Party lodged its application to have the Petitioners’ Company trademark expunged. He states that during the proceedings, the Petitioners filed their counter statement dated 5th June 2020 maintaining that they were the registered owners of the impugned trademark hence the Petitioners claim that they did not participate in the proceedings is false.
26. In the end as stated, the Registrar of Trademarks in its Ruling dated 9th April 2021 found in favour of the Interested Party. He affirmed that to date, no Court Order has been issued to set aside the Registrar of Trade Mark’s Ruling.
27. Aggrieved by the said Ruling, the Petitioners on 13th October, 2023 lodged an appeal vide HCCC Case No. E204 of 2021 Nairobi Beauty World Limited Vs Sime Derby Oils Professional SDN. BHD. It is stated that Hon. Justice C. Meoli on 24th January 2024, dismissed the application on account of procedural impropriety and the Petitioners were directed to lodge a proper appeal before the Court within 10 days.
28. Instead, the Petitioners appealed the said Ruling before the Court of Appeal. In addition, the Petitioners soon thereafter lodged HCCC Case No. E014 of 2023 Nairobi Beauty World Limited Vs Sime Derby Oils Professional SDN. BHD.
29. He depones that on 30th April 2023, the Trade Mark Application No.111560 ‘C.B.C. Brand’ (Words and Devices) was published and in a further Journal dated 31st May 2023, Trade Mark No.KE/T/2011/72138 ‘C.B.C. Coconut oil’ expunged. Subsequently on 8th August 2023, the Interested Party’s trademark was entered in the register of Trademarks and a Certificate of Registration issued.
30. In view of the foregoing, it is alleged that the Petitioners in lodging the instant suit concealed material facts and misrepresented the true account of events. On the contrary, he contends that it is clear that it is the Petitioners who have persistently continued to infringe upon the Interested Party’s rights as the registered owner of the impugned trademark. As a result of this, the Interested Party even proceeded to lodge HCCCOMM Case No. E604 of 2023 Sime Derby Oils Professional SDN. BHD vs Nairobi Beauty World Limited against the Petitioners.
31. Likewise, he avers that the purported deregistered trademark was in relation to a different company called Coconut Best Company Limited which is not the Interested Party.
32. The Interested party also asserted that on investigating its complaint, the 1st Respondent was acting within its mandate as empowered under Section 33 of the Anti-Counterfeit Act as read with the Ant-Counterfeit Regulations.
33. To this end, it is averred that the Petitioners have failed to establish how the 1st Respondent violated their rights. Further, he stressed that the Petitioners had not approached this Court with clean hands.
Petitioners’ Submissions
34. The Petitioners through Oscar Otieno and Company Advocates filed submissions dated 24th July 2024 where the issues for determination were identified as: whether the Petition is hypothetical, whether the 1st Respondent has the power to investigate the Petitioners, the effect of the existence of High Court Civil Case No. E014 of 2023 on the Investigations by the 1st Respondent and whether the Petitioners are entitled to the orders sought herein.
35. On the first issue, Counsel submitted that contrary to the Respondents allusion that the Petition is premature, the Petition raises a real controversy as under Article 22 and 258 of the Constitution a person can institute court proceedings claiming that a right is threatened. Reliance was placed in Bernard Murage v Fineserve Africa Limited & 3 others, Petition 503 of 2014 [2015] eKLR where it was held that:
“… that a party does not have to wait until a right or fundamental freedom has been violated, or for a violation of the Constitution to occur, before approaching the Court. He has a right to do so if there is a threat of violation or contravention of the Constitution. The High Court has held previously in the case of Coalition for Reforms and Democracy v Attorney General Petition No.630 of 2014 as follows on the same point; “We take this view because it cannot have been in vain that the drafters of the Constitution added “threat” to a right or fundamental freedom and “threatened ……contravention” as one of the conditions entitling a person to approach the High Court for relief under Article 165(3) (b) and (d) (i). A “threat” has been defined in Black’s Dictionary, 9th Edition as “an indication of an approaching menace e.g. threat of bankruptcy; a Person or a thing that might cause harm” (emphasis added). The same dictionary defines “threat” as “a communicated intent to inflict harm or loss to another…” The use of the words “indication”, “approaching”, “might” and “communicated intent” all go to show, in the context of Articles 22, 165(3) (d) and 258, that for relief to be granted, there must not be actual violation of either a fundamental right or of the Constitution but that indications of such violations are apparent.”
36. On the second issue, Counsel submitted that the 1st Respondent does not have the power to investigate the Petitioners herein as the Anti-Counterfeit Regulations, 2010 which donates this power, lapsed on a 25th January, 2023 as revoked under Section 21(1) of the Statutory Instruments Act, 2013. As such any investigations by the 1st Respondent argued to be null and void and further the 1st Respondent cannot arrogate itself the power to lay a claim and investigate the Petitioners herein.
37. According to Counsel, the Anti-Counterfeit Regulations, 2010 should be considered to have been made under the Statutory Instruments Act and the 10-year period began to run on 25th January 2013, on its commencement date and thus these Regulations lapsed on 25th January 2023.
38. Reliance was placed in Okiya Omtatah v Central Bank of Kenya & 7 others [2018] eKLR where it was held that:
“It is also important to note that section 27 of the said Statutory Instruments Act imports all these instruments as if they were made under the said Act and continue to be in force under the Act unless the same are repealed by the parent statute. In this regard I agree that the 10-year period can only begin to run from the commencement date and not before…”
39. Like dependence was placed in Vipul Kakad T/A Kavico Auto Spares & 328 Others vs. Kenya Bureau of Standards [2017] eKLR.
40. Turning to the next issue, Counsel submitted that the existence of High Court Civil Misc. Application No. E014 of 2023 (Nairobi Beauty World Limited vs Sime Darby oils Professionals) means that the pursuit for investigation and subsequent prosecution of the Petitioners by the 1st Respondent is in bad faith as the appeal has not been determined. Counsel stressed that the intended prosecution would be incapable of being reversed if the appeal against the decision of the Registrar of Trademarks succeeds.
41. To buttress this point reliance was placed in Saisi v Director of Public Prosecutions & 2 others (Civil Application 2 of 2020) [2020] KESC 24 (KLR) where it was held that:
“It behoves the Court to be satisfied that prima facie, with no objection, the application is meritorious and the prayers may be granted (see Gideon Sitelu Konchellah v. Julius Lekakeny Ole Sunkuli & 2 Others Civil Application No.26 of 2018 [2018] eKLR). The Applicants’ assertion is that the effect of the decision by the Court of Appeal is that they will be subjected to a criminal trial, a situation that will violate their constitutional rights to fair trial and equal benefits and protection of the law as more particularly set out in the petition of appeal.
We therefore find that the Applicants have demonstrated an arguable case which would be rendered nugatory in the absence of our intervention by way of granting the orders sought. We shall not at this juncture delve into the merits of the Applicants’ arguments as they will be addressed in the appeal itself”.
42. In view of the foregoing, Counsel submitted that the Petitioners were indeed entitled to the reliefs sought. Reliance was placed in Centre for Rights Education & Awareness (CREAW) v Attorney General& Another [2015] eKLR where it was held that:
“I fully agree with the sentiments of the Bench in the CORD case. A party need not wait for a violation of a right or a contravention of the Constitution to occur before approaching the Court for relief. It appears to me that the intent behind the use of the word “threatened” in both Articles 22 and 258 was to preempt the violation of rights, or of the Constitution. If a clear threat to either is made out, it cannot be properly argued that the petitioner should have waited for the violation or contravention to occur, and then seek relief. It is therefore my finding, and I so hold, that this petition is not premature, and is properly before me.”
1st Respondent’s Submissions
43. On 9th August 2024, the 1st Respondent through its Counsel, J.O. Adera filed submissions and set out the issues for determination as: whether the 1st Respondent has powers to investigate the Petitioners, whether the Petitioners have a registered trademark, whether there is an appeal against the decision of the Registrar of trademarks of 9th April 2021 and whether the Petitioners raise any constitutional issues for grant of the orders sought.
44. Counsel in the first issue opposed this assertion as it had not been raised by the Petitioners in their Petition. Counsel pointed out that this is offensive to the principle to wit parties are bound by their pleadings as seen in Dakianga Distributors (K) Ltd v Kenya Seed Company Limited [2015] eKLR. The Court of Appeal held that:
“As the parties are adversaries, it is left to each one of them to formulate his case in his own way, subject to the basic rules of pleadings... for the sake of certainty and finality, each party is bound by his own pleadings and cannot be allowed to raise a different or fresh case without due amendment properly made. Each party thus knows the case he has to meet and cannot be taken by surprise at the trial. The court itself is as bound by the pleadings of the parties as they are themselves. It is no part of the duty of the court to enter upon any inquiry into the case before it other than to adjudicate upon the specific matters in dispute which the parties themselves have raised by the pleadings. Indeed, the court would be acting contrary to its own character and nature if it were to pronounce any claim or defence not made by the parties. To do so would be to enter upon the realm of speculation. Moreover, in such event, the parties themselves, or at any rate one of them might well feel aggrieved; for a decision given on a claim or defence not made or raised by or against a party is equivalent to not hearing him at all and thus be a denial of justice... In the adversarial system of litigation therefore, it is the parties themselves who set the agenda for the trial by their pleadings and neither party can complain if the agenda is strictly adhered to. In such an agenda, there is no room for an item called “Any Other Business” in the sense that points other than those specific may be raised without notice.”
45. Like dependence as placed in David Sironga Ole Tukai v Francis Arap Muge & 2 others [2014] eKLR.
46. That said, Counsel submitted that the Anti - Counterfeit Regulations, 2010 were still in force at the time of the seizure of the infringing goods on 18th December 2023. Thus the 1st Respondent had the requisite power to act as it did, following the extension of operation of Statutory Instruments vide Legal Notice No. 217 on 29th November 2022.
47. Furthermore, it was argued that the 1st Respondent is empowered under Section 33 of the Anti-Counterfeit Act to receive complaints from intellectual property rights owners or their agents, in this case the Interested Party and to act on those complaints, as it did in this case by seizing infringing goods from the Petitioners.
48. Reliance was placed in Kenafric Matches Limited v Anti-Counterfeit Agency & another [2020] eKLR, where it was held that:
“Opposition proceedings are therefore part of the registration process and a trademark can only deemed to be duly registered after the opposition proceedings have been concluded in favour of the person seeking to register the trademark. All the parties agree that the Interested Party has filed opposition proceedings before the Registrar and the proceedings are pending determination. The outcome of those proceedings will determine whether the Petitioner’s trademark will be registered or not. It therefore follows that the Petitioner’s seized product was not manufactured under a registered trademark and was therefore exposed to a complaint that it is counterfeit.”
49. Accordingly, Counsel submitted that investigation of the Petitioners by the 1st Respondent does not amount to violation of their constitutional rights. This is since the 1st Respondent was satisfied that there was reasonable ground to believe that the Petitioners were engaging in conduct that violated the Interested Party’s trademark rights.
50. On the following issue, Counsel submitted that by virtue of the Registrar of Trademarks Ruling dated 9th April 2021 and the Notice issued on 31st May 2023, the Petitioners’ trade mark “C.B.C Pure white coconut oil” trade mark no. 72138 was expunged and from that date onwards seized to exist. In view of this, the Petitioners are argued not to be the registered owners of the impugned trademark.
51. To support this point reliance was placed in Pharmaceutical Manufacturing Co. Vs. Novelty Manufacturing Ltd. Nairobi [2001] 2 EA 521 where it was held that:
“that registration of a trademark confers the right exclusively to use the trademark and the infringement of the trademark is a tort of strict liability hence intention and motive are irrelevant considerations.”
52. Like reliance was placed in Wilson Muriithi Kariuki T/A Wiskam Agencies V Surgipharm Limited [2012] eKLR.
53. Counsel noted in the third issue, that no appeal exists against the decision of the Registrar of Trademarks as alleged by the Petitioners. Counsel stressed that the Petitioners continue to withhold material facts by failing to disclose relevant facts. In this case, that the application seeking leave to file the appeal out of time was dismissed on 7th March 2024 and the current application before the Court is an application seeking reinstatement of the application to appeal out of time. Counsel as such asserted that the Petitioners had come before this Court with unclean hands due to their dishonesty in disclosure of material facts.
54. Dependence was placed in Callen Magoma Omari V Suneka Land Disputes Tribunal & 4 others [2011] eKLR where it was held that:
“I do not think that this constitution is the panacea of all manner of ills imagined or not of the past. It is not the solution of the alleged or imagined past historical injustices. It was not meant to resurrect cases which had been dealt with and buried. It was not meant to violate or breach the well-known maxim of law that there must be an end to litigation nor was it meant to assist an indolent litigant where, as here, she had other remedies provided by statute and which she did not take advantage of. In other words, the constitution was not meant to take place of or cause conflict to statutory provisions governing appeals or even judicial review proceedings. Finally, I do not think that this constitution was meant to provide another frontier or planc for a litigant who had lost a case in the past or exhausted remedies then available to him to resuscitate it under the guise of violation of constitutional rights. I think that the constitution applies to Kenyans equally. That is the essence of articles 2, 3 and 20 of the constitution. It cannot be unconstitutional conduct merely because a party has lost a case to a successful party.”
55. Additional dependence was placed in Latifa M. Ramadhan v Omar M. Ramadhan & another [2021] eKLR.
56. On the fourth issue, Counsel submitted that the Petitioners had not demonstrated how they had been harassed and threatened by the 1st Respondent to constitute the basis of a constitutional petition. The Petitioners case is argued to constitute mere allegations with no demonstration of how the Respondents acted unlawfully. Counsel cited the case of Osman & another v Mohamud & 2 others [2024] KEELC 957 (KLR) where it was held that:
“The competency of the Petition is put to question and that goes to the jurisdiction of the Court to sustain the same. The 1st Respondent has asserted that the Petition lacks specificity in regard to the alleged violations and lacks substantiation. The Court in the premises has to consider whether the petition as presented by the Petitioners met the threshold of what would constitute a Constitutional Petition to be entertained by the Court as such. In order for a matter to qualify to be raised as a Constitutional Petition it ought to satisfy the criteria that was established in the Case of Anarita Karimi Njeru –vs- Republic (1979) eKLR. Firstly, there has to be a precise complaint; Secondly the specific provision of the Constitution alleged to be infringed; and Thirdly, the manner in which the Constitutional provision was infringed.”
57. Additional reliance was placed in Kenafric Matches Limited (supra), Kenneth Kanyarati & 2 others v Inspector General of Police Director of Criminal Investigations Department & 2 others [2015] eKLR, Republic vs. Commissioner of Police and Another ex parte Michael Monari & Another (2012) eKLR.
2nd Respondent’s Submissions
58. Counsel Job Mulati for the 2nd Respondent filed submissions dated 30th August 2024 and highlighted the issues for determination as: whether the 1st Respondent has powers to investigate the Petitioners, whether the Petitioners have a registered Trade Mark, whether Respondents’ have infringed the Petitioners Constitutional rights and whether the Petitioners should be granted the orders being sought.
59. Counsel in the first issue answering in the affirmative submitted that Section 3, 5, 23, 33 of the Anti-Counterfeit Act makes it plain that the 1st Respondent is empowered to carry out investigations as it did in this matter. Reliance was placed in Philomena Mbete Mwilu v Director of Public Prosecutions & 3 others; Stanley Muluvi Kiima (Interested Party); International Commission of Jurists Kenya Chapter (Amicus Curiae) [2019] eKLR where it was held that:
“In our view, it would be within the mandate of an investigative body to receive complaints and to investigate them. Such bodies or entities cannot be faulted for acting on the complaints as in so doing, they would be acting within their constitutional and statutory duty.’’
60. Like dependence was placed in Josephat Koli Nanok & another v Ethics and Anti-Corruption Commission (2018) eKLR and Kipoki Oreu Tasur V Inspector General of Police & 5 Others [2014] eKLR.
61. On the second issue, Counsel submitted that it was evident from the parties pleadings that the Petitioners trademark was expunged on 9th April 2021 following the Registrar of Trade marks determination. Counsel stressed that there was no evidence of an appeal or stay of the said expungement.
62. On the third issue, Counsel submitted that the Peti
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2. The gist of the Petition is that the investigation and intended prosecution against the Petitioners by the Respondents was instigated by the Interested Party hence is an abuse of the criminal justice system, the statutory mandates of the Respondents and a violation of the constitution in particular, Articles: 10(1), (2), 25 (a) and (c), 27 (1) & (2), 28, 29 (c) & (d), and 47 of the Constitution.
3. Accordingly, the Petitioners seek the following reliefs against the Respondents:
a) A declaration be issued that the 1st and 2nd Respondents conduct and actions jointly and severally contravene the Constitution and/or are likely to contravene or infringe upon the Petitioner's fundamental rights and freedoms guaranteed under Article 10(1), (2), 25 (a) and (c), 27 (1) & (2), 28, 29 (c) and (d), and 47, of the Constitution.
b) A declaration be issued that the Respondents' conduct and actions which are complained of in the Petition, jointly and/or severally, singularly and/or cumulatively against the Petitioner are oppressive, unfair, unreasonable, irrational, illegal and an abuse of power and the criminal justice system and process.
c) A declaration be issued that the Respondents investigations jointly and/or severally, singularly and cumulatively into the unknown allegations by the Interested party are tainted with illegality, mala fides and are being and/or have been conducted with and/or for an ulterior motive or extraneous purpose.
d) An order of prohibition directed to all the Respondents jointly and severally prohibiting any and all of them from carrying out and/or proceeding with any further and/or investigations into or in connection with the baseless allegations by the Interested Party against the Petitioner.
e) An order of prohibition directed to all the Respondents jointly and severally prohibiting any and all of them from reopening or purporting to reopen, mounting, bringing, instigating, carrying out and/or proceeding with any criminal proceedings or charges against the Petitioners in connection with the Interested Parties' baseless allegations against the Petitioner.
f) Any other relief that this Court may deem fit and just to grant in the interest of justice.
Petitioners’ Case
4. The 1st Petitioner states that he and the 2nd Petitioner are the directors of Nairobi Beauty World Limited.
5. For context, he depones that the trademark was originally registered on 3rd August 2011 under Class 3. They operated with the trademark until 2018 when they discovered that the Interested Party was also using the same trademark. As a result, the Petitioners sought to have that trademark deregistered and this was effected in March 2019.
6. Covertly, the Interested Party applied to have the Petitioners’ trademark deregistered soon thereafter and even registered the trademark under Class 29.
7. This was done without the Interested Party serving the deregistration proceedings that were undertaken before the Kenya Industrial Property Institute (KIPI). Instead, the matter proceeded ex parte and a decision was made without the Petitioners being granted an opportunity to be heard.
8. Subsequently, the Interested Party illegally assumed their trademark and sought to have persons utilizing the trademark to be investigated by the 1st Respondent who the Petitioners contend is keen to see Interested Party taken through a malicious prosecution despite being aware of the pending HCCC Case No. E014 of 2023 Nairobi Beauty World Limited Vs Sime Derby Oils Professional SDN. BHD.
9. The Petitioner avers that in the said civil suit; they were granted leave by Justice Asenath Ongeri on 24th September 2024 to file an Appeal against the decision of the Registrar of Trademarks. They filed the appeal in HCOMMA No. E288 Nairobi Beauty World Limited vs Sime Darby Oils Professionals SDN.BHD which is ongoing.
10. He avers that despite this, the 1st Respondent went ahead instituted prosecution vide file number ACA/HQ/ENF/IPRC/69/2023 which case was set to begin on 8th March 2024.The Petitioners contend that the 1st Respondent is working in collaboration with the Interested Party to frustrate their right to be heard in the illegal criminal proceedings.
11. He further alleges that as a result of the Interested Party’s actions, their property was seized by the 1st Respondent yet the same is not counterfeit as purported.
12. It is the petitioner’s case therefore that the Respondents are working together with the Interested Party to violate their rights and have exercised their statutory power irrationality and unreasonably. The Petitioners are aggrieved that the 1st Respondent is also working in cohorts with the Interested Party to aid it take over their established brand and trademark, which they built for over 8 years.
1st Respondent’s Case
13. The 1st Respondent through its Inspector Collins Okoth filed its Replying Affidavit sworn on 15th March 2024.He depones that the Interested Party lodged its complaint on 11th December 2023 concerning the impugned trademark through its agent.
14. He avers that the Interested Party is the registered owner in classes 3 and 29 of the Nice Classification for the trade mark ‘C.B.C. Brand’ (word and device) under certificate for trade mark no. 111560 in class 3 of the Nice Classification registered in 2020 and under certificate for trade mark no. 41399 in class 29 of the Nice Classification registered in 1994.He contended that the Interested Party has used this trademark since then within Kenya.
15. He depones that on 25th March 2020, the Interested Party sought to further register the trademark with the Registrar of Trademarks. This application was however rejected owing to the reason that the Petitioners’ company had registered ‘C.B.C. Pure White Coconut Oil’ and been issued with the Certificate of Trade Mark No.72138. In reaction to this, he avers that the Interested Party sought to have the same deregistered.
16. In a Ruling by the Registrar of Trade Marks dated 9th April 2021, the Petitioners’ trademark was deregistered and expunged. Soon thereafter, the Interested Party was issued with a Certificate of Registration for trademark No.111560.Considering this, it is stated that contrary to the Petitioners allegations, they do not have a registered trademark.
17. In light of the foregoing, the 1st Respondent maintained that the Petitioners allegations are false as the impugned trademark was lawfully expunged in a process where they fully participated. He further disputes the existence of HCCC Case No. E014 of 2023, Nairobi Beauty World Limited v. Sime Derby Oils Professional SDN.BHD.
18. Additionally, he avers that the alleged deregistered trademark effected through the letter dated 12th March 2019 relates to a different company, that is, Coconut Best Limited which has no relationship with the Interested Party.
19. It is asserted that the 1st Respondent’s investigations unearthed that the Interested Party’s complaint had probable cause and further complied with the provisions of the Anti-Counterfeit Act. It is stated that the 1st Respondent has a statutory mandate to investigate criminal complaints relating to infringement of intellectual property rights and in the exercise of that mandate it cannot be said that it acted illegally.
20. He further depones that the investigations established evidence of counterfeiting by the Petitioners through their company.
21. As a result, the 1st Respondent seized the items on 18th December 2023 which if ascertained, the 1st Respondent will recommend the same to the 2nd Respondent for prosecution.
22. On this premise, the 1st Respondent averred that in carrying out its mandate, it did not violate the Petitioners’ rights as alleged nor did it act maliciously as alleged. Further, that the Petition is premature as the 1st Respondent has not even recommended charges to the 2nd Respondent and neither has the 2nd Respondent approved any prosecution.
2nd Respondent’s Case
23. In reaction to the Petition, the 2nd Respondent filed its Grounds of Opposition dated 4th April 2024 on the basis that:
i. The instant Petition is misconceived, bad in law and incompetent to the extent that it fails to give the particulars of the threat or the infringement of the Applicants' constitutional rights and freedoms by the Respondents.
ii. Pursuant to Article 157, the 2nd Respondent is the only institution with the constitutional mandate to institute and undertake criminal proceedings and the exercise of this mandate cannot be interfered with unless in exceptional and clearest circumstances where there is infringement of fundamental freedoms, violation of the constitution and the law or where there is abuse of the legal process.
iii. The 2nd Respondent in exercise of his Constitutional mandate conferred by Article 157 of the Constitution will make a decision to charge the Petitioner based on sufficiency of evidence and the public interest underlying prosecution of cases.
iv. The Petitioners herein misapprehended the provisions of Article 157 and Article 158 of the Constitution as read with the Office of the Director of Public Prosecutions Act, 2013 to the extent that they seem to imply that the 2nd Respondent is involved in the investigations and arrests of suspects.
v. Pursuant to Section 193A of the Criminal Procedure Code, criminal and civil cases can proceed concurrently and nothing prohibits the 2nd Respondent from preferring criminal charges against the Petitioner where criminal culpability has been established based on evidence placed before the Respondent.
vi. The Petitioner discloses no cause of action against the 2nd Respondent as the matter relates to the conduct of the 1st Respondent and not the decision to charge the Petitioner/ prosecutions has been made.
vii. The institution of the instant Application and Petition is premature since no arrests and/or preference of any charges against the Petitioners has happened, accordingly, the Petitioners' apprehension is unfounded.
viii. The instant Petition is frivolous, vexatious and amounts to an abuse of the court process as it seeks to have the Respondents restrained from performing their respective constitutional duties and mandates.
Interested Party’s Case
24. The Interested Party filed its Replying Affidavit through its representative, Abdulkadir Warsame sworn on 11th April 2024.
25. He depones that on 14th April 2020, the Interested Party lodged its application to have the Petitioners’ Company trademark expunged. He states that during the proceedings, the Petitioners filed their counter statement dated 5th June 2020 maintaining that they were the registered owners of the impugned trademark hence the Petitioners claim that they did not participate in the proceedings is false.
26. In the end as stated, the Registrar of Trademarks in its Ruling dated 9th April 2021 found in favour of the Interested Party. He affirmed that to date, no Court Order has been issued to set aside the Registrar of Trade Mark’s Ruling.
27. Aggrieved by the said Ruling, the Petitioners on 13th October, 2023 lodged an appeal vide HCCC Case No. E204 of 2021 Nairobi Beauty World Limited Vs Sime Derby Oils Professional SDN. BHD. It is stated that Hon. Justice C. Meoli on 24th January 2024, dismissed the application on account of procedural impropriety and the Petitioners were directed to lodge a proper appeal before the Court within 10 days.
28. Instead, the Petitioners appealed the said Ruling before the Court of Appeal. In addition, the Petitioners soon thereafter lodged HCCC Case No. E014 of 2023 Nairobi Beauty World Limited Vs Sime Derby Oils Professional SDN. BHD.
29. He depones that on 30th April 2023, the Trade Mark Application No.111560 ‘C.B.C. Brand’ (Words and Devices) was published and in a further Journal dated 31st May 2023, Trade Mark No.KE/T/2011/72138 ‘C.B.C. Coconut oil’ expunged. Subsequently on 8th August 2023, the Interested Party’s trademark was entered in the register of Trademarks and a Certificate of Registration issued.
30. In view of the foregoing, it is alleged that the Petitioners in lodging the instant suit concealed material facts and misrepresented the true account of events. On the contrary, he contends that it is clear that it is the Petitioners who have persistently continued to infringe upon the Interested Party’s rights as the registered owner of the impugned trademark. As a result of this, the Interested Party even proceeded to lodge HCCCOMM Case No. E604 of 2023 Sime Derby Oils Professional SDN. BHD vs Nairobi Beauty World Limited against the Petitioners.
31. Likewise, he avers that the purported deregistered trademark was in relation to a different company called Coconut Best Company Limited which is not the Interested Party.
32. The Interested party also asserted that on investigating its complaint, the 1st Respondent was acting within its mandate as empowered under Section 33 of the Anti-Counterfeit Act as read with the Ant-Counterfeit Regulations.
33. To this end, it is averred that the Petitioners have failed to establish how the 1st Respondent violated their rights. Further, he stressed that the Petitioners had not approached this Court with clean hands.
Petitioners’ Submissions
34. The Petitioners through Oscar Otieno and Company Advocates filed submissions dated 24th July 2024 where the issues for determination were identified as: whether the Petition is hypothetical, whether the 1st Respondent has the power to investigate the Petitioners, the effect of the existence of High Court Civil Case No. E014 of 2023 on the Investigations by the 1st Respondent and whether the Petitioners are entitled to the orders sought herein.
35. On the first issue, Counsel submitted that contrary to the Respondents allusion that the Petition is premature, the Petition raises a real controversy as under Article 22 and 258 of the Constitution a person can institute court proceedings claiming that a right is threatened. Reliance was placed in Bernard Murage v Fineserve Africa Limited & 3 others, Petition 503 of 2014 [2015] eKLR where it was held that:
“… that a party does not have to wait until a right or fundamental freedom has been violated, or for a violation of the Constitution to occur, before approaching the Court. He has a right to do so if there is a threat of violation or contravention of the Constitution. The High Court has held previously in the case of Coalition for Reforms and Democracy v Attorney General Petition No.630 of 2014 as follows on the same point; “We take this view because it cannot have been in vain that the drafters of the Constitution added “threat” to a right or fundamental freedom and “threatened ……contravention” as one of the conditions entitling a person to approach the High Court for relief under Article 165(3) (b) and (d) (i). A “threat” has been defined in Black’s Dictionary, 9th Edition as “an indication of an approaching menace e.g. threat of bankruptcy; a Person or a thing that might cause harm” (emphasis added). The same dictionary defines “threat” as “a communicated intent to inflict harm or loss to another…” The use of the words “indication”, “approaching”, “might” and “communicated intent” all go to show, in the context of Articles 22, 165(3) (d) and 258, that for relief to be granted, there must not be actual violation of either a fundamental right or of the Constitution but that indications of such violations are apparent.”
36. On the second issue, Counsel submitted that the 1st Respondent does not have the power to investigate the Petitioners herein as the Anti-Counterfeit Regulations, 2010 which donates this power, lapsed on a 25th January, 2023 as revoked under Section 21(1) of the Statutory Instruments Act, 2013. As such any investigations by the 1st Respondent argued to be null and void and further the 1st Respondent cannot arrogate itself the power to lay a claim and investigate the Petitioners herein.
37. According to Counsel, the Anti-Counterfeit Regulations, 2010 should be considered to have been made under the Statutory Instruments Act and the 10-year period began to run on 25th January 2013, on its commencement date and thus these Regulations lapsed on 25th January 2023.
38. Reliance was placed in Okiya Omtatah v Central Bank of Kenya & 7 others [2018] eKLR where it was held that:
“It is also important to note that section 27 of the said Statutory Instruments Act imports all these instruments as if they were made under the said Act and continue to be in force under the Act unless the same are repealed by the parent statute. In this regard I agree that the 10-year period can only begin to run from the commencement date and not before…”
39. Like dependence was placed in Vipul Kakad T/A Kavico Auto Spares & 328 Others vs. Kenya Bureau of Standards [2017] eKLR.
40. Turning to the next issue, Counsel submitted that the existence of High Court Civil Misc. Application No. E014 of 2023 (Nairobi Beauty World Limited vs Sime Darby oils Professionals) means that the pursuit for investigation and subsequent prosecution of the Petitioners by the 1st Respondent is in bad faith as the appeal has not been determined. Counsel stressed that the intended prosecution would be incapable of being reversed if the appeal against the decision of the Registrar of Trademarks succeeds.
41. To buttress this point reliance was placed in Saisi v Director of Public Prosecutions & 2 others (Civil Application 2 of 2020) [2020] KESC 24 (KLR) where it was held that:
“It behoves the Court to be satisfied that prima facie, with no objection, the application is meritorious and the prayers may be granted (see Gideon Sitelu Konchellah v. Julius Lekakeny Ole Sunkuli & 2 Others Civil Application No.26 of 2018 [2018] eKLR). The Applicants’ assertion is that the effect of the decision by the Court of Appeal is that they will be subjected to a criminal trial, a situation that will violate their constitutional rights to fair trial and equal benefits and protection of the law as more particularly set out in the petition of appeal.
We therefore find that the Applicants have demonstrated an arguable case which would be rendered nugatory in the absence of our intervention by way of granting the orders sought. We shall not at this juncture delve into the merits of the Applicants’ arguments as they will be addressed in the appeal itself”.
42. In view of the foregoing, Counsel submitted that the Petitioners were indeed entitled to the reliefs sought. Reliance was placed in Centre for Rights Education & Awareness (CREAW) v Attorney General& Another [2015] eKLR where it was held that:
“I fully agree with the sentiments of the Bench in the CORD case. A party need not wait for a violation of a right or a contravention of the Constitution to occur before approaching the Court for relief. It appears to me that the intent behind the use of the word “threatened” in both Articles 22 and 258 was to preempt the violation of rights, or of the Constitution. If a clear threat to either is made out, it cannot be properly argued that the petitioner should have waited for the violation or contravention to occur, and then seek relief. It is therefore my finding, and I so hold, that this petition is not premature, and is properly before me.”
1st Respondent’s Submissions
43. On 9th August 2024, the 1st Respondent through its Counsel, J.O. Adera filed submissions and set out the issues for determination as: whether the 1st Respondent has powers to investigate the Petitioners, whether the Petitioners have a registered trademark, whether there is an appeal against the decision of the Registrar of trademarks of 9th April 2021 and whether the Petitioners raise any constitutional issues for grant of the orders sought.
44. Counsel in the first issue opposed this assertion as it had not been raised by the Petitioners in their Petition. Counsel pointed out that this is offensive to the principle to wit parties are bound by their pleadings as seen in Dakianga Distributors (K) Ltd v Kenya Seed Company Limited [2015] eKLR. The Court of Appeal held that:
“As the parties are adversaries, it is left to each one of them to formulate his case in his own way, subject to the basic rules of pleadings... for the sake of certainty and finality, each party is bound by his own pleadings and cannot be allowed to raise a different or fresh case without due amendment properly made. Each party thus knows the case he has to meet and cannot be taken by surprise at the trial. The court itself is as bound by the pleadings of the parties as they are themselves. It is no part of the duty of the court to enter upon any inquiry into the case before it other than to adjudicate upon the specific matters in dispute which the parties themselves have raised by the pleadings. Indeed, the court would be acting contrary to its own character and nature if it were to pronounce any claim or defence not made by the parties. To do so would be to enter upon the realm of speculation. Moreover, in such event, the parties themselves, or at any rate one of them might well feel aggrieved; for a decision given on a claim or defence not made or raised by or against a party is equivalent to not hearing him at all and thus be a denial of justice... In the adversarial system of litigation therefore, it is the parties themselves who set the agenda for the trial by their pleadings and neither party can complain if the agenda is strictly adhered to. In such an agenda, there is no room for an item called “Any Other Business” in the sense that points other than those specific may be raised without notice.”
45. Like dependence as placed in David Sironga Ole Tukai v Francis Arap Muge & 2 others [2014] eKLR.
46. That said, Counsel submitted that the Anti - Counterfeit Regulations, 2010 were still in force at the time of the seizure of the infringing goods on 18th December 2023. Thus the 1st Respondent had the requisite power to act as it did, following the extension of operation of Statutory Instruments vide Legal Notice No. 217 on 29th November 2022.
47. Furthermore, it was argued that the 1st Respondent is empowered under Section 33 of the Anti-Counterfeit Act to receive complaints from intellectual property rights owners or their agents, in this case the Interested Party and to act on those complaints, as it did in this case by seizing infringing goods from the Petitioners.
48. Reliance was placed in Kenafric Matches Limited v Anti-Counterfeit Agency & another [2020] eKLR, where it was held that:
“Opposition proceedings are therefore part of the registration process and a trademark can only deemed to be duly registered after the opposition proceedings have been concluded in favour of the person seeking to register the trademark. All the parties agree that the Interested Party has filed opposition proceedings before the Registrar and the proceedings are pending determination. The outcome of those proceedings will determine whether the Petitioner’s trademark will be registered or not. It therefore follows that the Petitioner’s seized product was not manufactured under a registered trademark and was therefore exposed to a complaint that it is counterfeit.”
49. Accordingly, Counsel submitted that investigation of the Petitioners by the 1st Respondent does not amount to violation of their constitutional rights. This is since the 1st Respondent was satisfied that there was reasonable ground to believe that the Petitioners were engaging in conduct that violated the Interested Party’s trademark rights.
50. On the following issue, Counsel submitted that by virtue of the Registrar of Trademarks Ruling dated 9th April 2021 and the Notice issued on 31st May 2023, the Petitioners’ trade mark “C.B.C Pure white coconut oil” trade mark no. 72138 was expunged and from that date onwards seized to exist. In view of this, the Petitioners are argued not to be the registered owners of the impugned trademark.
51. To support this point reliance was placed in Pharmaceutical Manufacturing Co. Vs. Novelty Manufacturing Ltd. Nairobi [2001] 2 EA 521 where it was held that:
“that registration of a trademark confers the right exclusively to use the trademark and the infringement of the trademark is a tort of strict liability hence intention and motive are irrelevant considerations.”
52. Like reliance was placed in Wilson Muriithi Kariuki T/A Wiskam Agencies V Surgipharm Limited [2012] eKLR.
53. Counsel noted in the third issue, that no appeal exists against the decision of the Registrar of Trademarks as alleged by the Petitioners. Counsel stressed that the Petitioners continue to withhold material facts by failing to disclose relevant facts. In this case, that the application seeking leave to file the appeal out of time was dismissed on 7th March 2024 and the current application before the Court is an application seeking reinstatement of the application to appeal out of time. Counsel as such asserted that the Petitioners had come before this Court with unclean hands due to their dishonesty in disclosure of material facts.
54. Dependence was placed in Callen Magoma Omari V Suneka Land Disputes Tribunal & 4 others [2011] eKLR where it was held that:
“I do not think that this constitution is the panacea of all manner of ills imagined or not of the past. It is not the solution of the alleged or imagined past historical injustices. It was not meant to resurrect cases which had been dealt with and buried. It was not meant to violate or breach the well-known maxim of law that there must be an end to litigation nor was it meant to assist an indolent litigant where, as here, she had other remedies provided by statute and which she did not take advantage of. In other words, the constitution was not meant to take place of or cause conflict to statutory provisions governing appeals or even judicial review proceedings. Finally, I do not think that this constitution was meant to provide another frontier or planc for a litigant who had lost a case in the past or exhausted remedies then available to him to resuscitate it under the guise of violation of constitutional rights. I think that the constitution applies to Kenyans equally. That is the essence of articles 2, 3 and 20 of the constitution. It cannot be unconstitutional conduct merely because a party has lost a case to a successful party.”
55. Additional dependence was placed in Latifa M. Ramadhan v Omar M. Ramadhan & another [2021] eKLR.
56. On the fourth issue, Counsel submitted that the Petitioners had not demonstrated how they had been harassed and threatened by the 1st Respondent to constitute the basis of a constitutional petition. The Petitioners case is argued to constitute mere allegations with no demonstration of how the Respondents acted unlawfully. Counsel cited the case of Osman & another v Mohamud & 2 others [2024] KEELC 957 (KLR) where it was held that:
“The competency of the Petition is put to question and that goes to the jurisdiction of the Court to sustain the same. The 1st Respondent has asserted that the Petition lacks specificity in regard to the alleged violations and lacks substantiation. The Court in the premises has to consider whether the petition as presented by the Petitioners met the threshold of what would constitute a Constitutional Petition to be entertained by the Court as such. In order for a matter to qualify to be raised as a Constitutional Petition it ought to satisfy the criteria that was established in the Case of Anarita Karimi Njeru –vs- Republic (1979) eKLR. Firstly, there has to be a precise complaint; Secondly the specific provision of the Constitution alleged to be infringed; and Thirdly, the manner in which the Constitutional provision was infringed.”
57. Additional reliance was placed in Kenafric Matches Limited (supra), Kenneth Kanyarati & 2 others v Inspector General of Police Director of Criminal Investigations Department & 2 others [2015] eKLR, Republic vs. Commissioner of Police and Another ex parte Michael Monari & Another (2012) eKLR.
2nd Respondent’s Submissions
58. Counsel Job Mulati for the 2nd Respondent filed submissions dated 30th August 2024 and highlighted the issues for determination as: whether the 1st Respondent has powers to investigate the Petitioners, whether the Petitioners have a registered Trade Mark, whether Respondents’ have infringed the Petitioners Constitutional rights and whether the Petitioners should be granted the orders being sought.
59. Counsel in the first issue answering in the affirmative submitted that Section 3, 5, 23, 33 of the Anti-Counterfeit Act makes it plain that the 1st Respondent is empowered to carry out investigations as it did in this matter. Reliance was placed in Philomena Mbete Mwilu v Director of Public Prosecutions & 3 others; Stanley Muluvi Kiima (Interested Party); International Commission of Jurists Kenya Chapter (Amicus Curiae) [2019] eKLR where it was held that:
“In our view, it would be within the mandate of an investigative body to receive complaints and to investigate them. Such bodies or entities cannot be faulted for acting on the complaints as in so doing, they would be acting within their constitutional and statutory duty.’’
60. Like dependence was placed in Josephat Koli Nanok & another v Ethics and Anti-Corruption Commission (2018) eKLR and Kipoki Oreu Tasur V Inspector General of Police & 5 Others [2014] eKLR.
61. On the second issue, Counsel submitted that it was evident from the parties pleadings that the Petitioners trademark was expunged on 9th April 2021 following the Registrar of Trade marks determination. Counsel stressed that there was no evidence of an appeal or stay of the said expungement.
62. On the third issue, Counsel submitted that the Peti
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