Introduction
1. The Plaintiff, Alfayo Ngeresa Mabera t/a Nice Baby Enterprises, filed this suit against the Defendants alleging infringement of his registered trademark No. 94436, Class 39, for "Nice Baby Enterprises." The Plaintiff seeks an injunction to restrain the Defendants from infringing his trademark, general damages for the infringement, interest, and costs of the suit.
2. The Plaintiff operates public service vehicles (PSVs) branded with the registered trademark "Nice Baby Enterprises" on the Kisii-Nairobi route. He alleges that the Defendants have unlawfully branded their fleet of 14 vehicles (registration numbers KAT 582B, KCA 648 G, KCJ 167 R , KCF 400 W, KBZ 831 C, KBJ 126 Y, KCD 017 J , KAK 995 M, KCE 376 L, KCK 421 J , KCH 674E, KCR 868S, KCP 055BAND KCP 839 V )with similar colors and designs, causing confusion among customers and damaging his business reputation.
3. The Defendants deny the allegations, challenge the validity of the Plaintiff's trademark registration, and argue that their branding does not resemble the Plaintiff's trademark.
Issues for Determination
4. I have considered the entire evidence on record and the submissions by parties herein. The issues arising for determination are as follows :
1. The Court has identified the following issues for determination:
2. Whether the Plaintiff has a validly registered trademark No. 94436, Class 39.
3. Whether the Defendants infringed the Plaintiff's registered trademark.
4. Whether the Defendants have demonstrated that their use of the branding is not likely to deceive or cause confusion.
5. What reliefs the Court can grant in the circumstances.
6. Who bears the costs of the suit.
Analysis
Validity of the Trademark
5. The Plaintiff produced a certificate of registration for trademark No. 94436, Class 39, issued on October 19, 2016, and valid until October 19, 2026. The certificate was not disputed by the Defendants during the trial. The Court finds that the Plaintiff has a validly registered trademark.
Infringement of the Trademark
6.The Plaintiff provided evidence, including a list of motor vehicles allegedly infringing his trademark and a demand letter sent to the Defendants on August 30, 2017, which went unanswered. The Plaintiff testified that the Defendants' use of his trademark caused confusion among customers, leading to loss of business and damage to his reputation. The Defendants admitted knowledge of some of the vehicles listed in the Plaintiff's amended plaint and acknowledged that the Plaintiff's trademark was valid. However, they failed to produce evidence to demonstrate that their vehicles were branded differently from the Plaintiff's trademark.
7. The Court finds that the Plaintiff has proved, on a balance of probabilities, that the Defendants infringed his registered trademark by using similar branding on their vehicles.
Likelihood of Deception or Confusion
8.Section 8(2) of the Trade Marks Act requires the Defendants to establish that their use of the branding is not likely to deceive or cause confusion. The Defendants failed to provide evidence to exonerate themselves from the Plaintiff's complaint. The Court finds that the Defendants' use of the branding is likely to deceive or cause confusion among customers, as it creates a false connection between the Defendants' vehicles and the Plaintiff's business.
Reliefs
9.The Plaintiff has made out a case for an injunction against the Defendants to restrain them from infringing his registered trademark. Sections 7 and 35 of the Trade Marks Act, provides for remedies for infringement of trade marks . This includes orders of injunction and damages.
10.In the case of East African Industries v Trufoods Ltd [1972] EA 420, the Court held that once infringement is established, a permanent injunction must issue to restrain further use of the infringing mark.
11.On damages, the court has powers to award damages for infringement of trade marks . Damages In Lever V Goodwin 1887, 36 Ch. D. 1 Cotton L.J. held that :
It is well known that, both in trade-mark cases and patent cases, the plaintiff is entitled, if he succeeds in getting an injunction, to take either of two forms of relief, he may either say, ‘”I claim from you the damage I have sustained from your wrongful act, or I claim from you the profit which you have made by your wrongful act.”
12. The damages are intended to compensate the plaintiff for the loss of good will and profits and act as deterrent . In the case of Draper v Trist [1934] 3 All ER 513 Goddard, L.J held that ;
“In passing off cases, however, the true basis of the action is that the passing off by the defendant of his goods as the goods of the plaintiff injures the right of property in the plaintiff, that right of property being his right to the goodwill of his business. The law assumes, or presumes, that, if the goodwill of a man’s business has been interfered with by the passing off of goods, damages results therefrom.”
13.I find that since the breach of trade mark and misrepresentation to public have has been established , it is presumed that the plaintiff suffered damage . The Plaintiff is thus entitled to general damages for the tortious act of infringement.
14. On assessment of damages the court in the case of Mabati Rolling Mills Limited v Royal Mabati Factory Limited [2020] KEHC 9717 (KLR) cited the case of Gerber v Lectra [1995] R.P.C 383, where the five (5) principles applicable in the assessment of damages were set out as follows:
“(a) Damages are compensatory only, to put the claimant in the same position he would have been in had the wrong not been sustained;
(b) The burden of proof lies on the claimant, but damages are to be assessed liberally;
(c) Where the claimant has licensed his right, the damages are the lost loyalty;
(d) It is irrelevant that the defendant could have competed lawfully; and
(e) Where the claimant has exploited his right by his own sales, he can claim lost profit on sales by the defendant he would have made otherwise, and lost profit on his own sales to the extent that he was forced by the infringement to reduce his own price”.
Also the Canadian Court in General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Ltd [1975] 1 R.P.C 203 at 824 held thus:
“As in the case of any other tort (leaving aside cases where exemplary damages can be given) the object of damages is to compensate for loss or injury. The general rule at any rate in relation to ‘economic’ torts is that the measure of damages is to be, so far as possible, that sum of money which will put the injured party in the same position as he would have been in if he had not sustained the wrong.”
15. In the case of Mabati Rolling Mills Limited v Royal Mabati Factory Limited (Supra) of the plaintiff was awarded general damages for breach of trade mark in the sum of Kshs. 2,000,000/= on 29.4.2020. Considering the nature of the business of the plaintiff , the inflation trends in Kenya, and the recent awards in similar cases, I proceed to award the Plaintiff general damages of Kshs. 1,000,000/=. The Plaintiff is also entitled to interest at court rates and costs of the suit.
Conclusion
16. In view of the foregoing, the Court enters judgment in favor of the Plaintiff against the defendants jointly and severally in the following terms:
a) An order of injunction is issued to restrain the Defendants, whether by themselves, servants, agents, or otherwise, from infringing the Plaintiff's registered trademark No. 94436, Class 39.
b) General damages in the sum of Kshs. 1,000,000/=.
c) Interest on the awarded damages at court rates from the date of this judgment until payment in full.
d) The Defendants shall bear the costs of this suit.
T.A. ODERA
JUDGE
23.3.26
DELIVERED VIRTUALLY VIA TEAMS PLATFORM THIS 23RD DAY OF MARCH , 2026, IN THE PRESENCE OF CA -MR OGENDO , PARTIES ABSENT
1. The Plaintiff, Alfayo Ngeresa Mabera t/a Nice Baby Enterprises, filed this suit against the Defendants alleging infringement of his registered trademark No. 94436, Class 39, for "Nice Baby Enterprises." The Plaintiff seeks an injunction to restrain the Defendants from infringing his trademark, general damages for the infringement, interest, and costs of the suit.
2. The Plaintiff operates public service vehicles (PSVs) branded with the registered trademark "Nice Baby Enterprises" on the Kisii-Nairobi route. He alleges that the Defendants have unlawfully branded their fleet of 14 vehicles (registration numbers KAT 582B, KCA 648 G, KCJ 167 R , KCF 400 W, KBZ 831 C, KBJ 126 Y, KCD 017 J , KAK 995 M, KCE 376 L, KCK 421 J , KCH 674E, KCR 868S, KCP 055BAND KCP 839 V )with similar colors and designs, causing confusion among customers and damaging his business reputation.
3. The Defendants deny the allegations, challenge the validity of the Plaintiff's trademark registration, and argue that their branding does not resemble the Plaintiff's trademark.
Issues for Determination
4. I have considered the entire evidence on record and the submissions by parties herein. The issues arising for determination are as follows :
1. The Court has identified the following issues for determination:
2. Whether the Plaintiff has a validly registered trademark No. 94436, Class 39.
3. Whether the Defendants infringed the Plaintiff's registered trademark.
4. Whether the Defendants have demonstrated that their use of the branding is not likely to deceive or cause confusion.
5. What reliefs the Court can grant in the circumstances.
6. Who bears the costs of the suit.
Analysis
Validity of the Trademark
5. The Plaintiff produced a certificate of registration for trademark No. 94436, Class 39, issued on October 19, 2016, and valid until October 19, 2026. The certificate was not disputed by the Defendants during the trial. The Court finds that the Plaintiff has a validly registered trademark.
Infringement of the Trademark
6.The Plaintiff provided evidence, including a list of motor vehicles allegedly infringing his trademark and a demand letter sent to the Defendants on August 30, 2017, which went unanswered. The Plaintiff testified that the Defendants' use of his trademark caused confusion among customers, leading to loss of business and damage to his reputation. The Defendants admitted knowledge of some of the vehicles listed in the Plaintiff's amended plaint and acknowledged that the Plaintiff's trademark was valid. However, they failed to produce evidence to demonstrate that their vehicles were branded differently from the Plaintiff's trademark.
7. The Court finds that the Plaintiff has proved, on a balance of probabilities, that the Defendants infringed his registered trademark by using similar branding on their vehicles.
Likelihood of Deception or Confusion
8.Section 8(2) of the Trade Marks Act requires the Defendants to establish that their use of the branding is not likely to deceive or cause confusion. The Defendants failed to provide evidence to exonerate themselves from the Plaintiff's complaint. The Court finds that the Defendants' use of the branding is likely to deceive or cause confusion among customers, as it creates a false connection between the Defendants' vehicles and the Plaintiff's business.
Reliefs
9.The Plaintiff has made out a case for an injunction against the Defendants to restrain them from infringing his registered trademark. Sections 7 and 35 of the Trade Marks Act, provides for remedies for infringement of trade marks . This includes orders of injunction and damages.
10.In the case of East African Industries v Trufoods Ltd [1972] EA 420, the Court held that once infringement is established, a permanent injunction must issue to restrain further use of the infringing mark.
11.On damages, the court has powers to award damages for infringement of trade marks . Damages In Lever V Goodwin 1887, 36 Ch. D. 1 Cotton L.J. held that :
It is well known that, both in trade-mark cases and patent cases, the plaintiff is entitled, if he succeeds in getting an injunction, to take either of two forms of relief, he may either say, ‘”I claim from you the damage I have sustained from your wrongful act, or I claim from you the profit which you have made by your wrongful act.”
12. The damages are intended to compensate the plaintiff for the loss of good will and profits and act as deterrent . In the case of Draper v Trist [1934] 3 All ER 513 Goddard, L.J held that ;
“In passing off cases, however, the true basis of the action is that the passing off by the defendant of his goods as the goods of the plaintiff injures the right of property in the plaintiff, that right of property being his right to the goodwill of his business. The law assumes, or presumes, that, if the goodwill of a man’s business has been interfered with by the passing off of goods, damages results therefrom.”
13.I find that since the breach of trade mark and misrepresentation to public have has been established , it is presumed that the plaintiff suffered damage . The Plaintiff is thus entitled to general damages for the tortious act of infringement.
14. On assessment of damages the court in the case of Mabati Rolling Mills Limited v Royal Mabati Factory Limited [2020] KEHC 9717 (KLR) cited the case of Gerber v Lectra [1995] R.P.C 383, where the five (5) principles applicable in the assessment of damages were set out as follows:
“(a) Damages are compensatory only, to put the claimant in the same position he would have been in had the wrong not been sustained;
(b) The burden of proof lies on the claimant, but damages are to be assessed liberally;
(c) Where the claimant has licensed his right, the damages are the lost loyalty;
(d) It is irrelevant that the defendant could have competed lawfully; and
(e) Where the claimant has exploited his right by his own sales, he can claim lost profit on sales by the defendant he would have made otherwise, and lost profit on his own sales to the extent that he was forced by the infringement to reduce his own price”.
Also the Canadian Court in General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Ltd [1975] 1 R.P.C 203 at 824 held thus:
“As in the case of any other tort (leaving aside cases where exemplary damages can be given) the object of damages is to compensate for loss or injury. The general rule at any rate in relation to ‘economic’ torts is that the measure of damages is to be, so far as possible, that sum of money which will put the injured party in the same position as he would have been in if he had not sustained the wrong.”
15. In the case of Mabati Rolling Mills Limited v Royal Mabati Factory Limited (Supra) of the plaintiff was awarded general damages for breach of trade mark in the sum of Kshs. 2,000,000/= on 29.4.2020. Considering the nature of the business of the plaintiff , the inflation trends in Kenya, and the recent awards in similar cases, I proceed to award the Plaintiff general damages of Kshs. 1,000,000/=. The Plaintiff is also entitled to interest at court rates and costs of the suit.
Conclusion
16. In view of the foregoing, the Court enters judgment in favor of the Plaintiff against the defendants jointly and severally in the following terms:
a) An order of injunction is issued to restrain the Defendants, whether by themselves, servants, agents, or otherwise, from infringing the Plaintiff's registered trademark No. 94436, Class 39.
b) General damages in the sum of Kshs. 1,000,000/=.
c) Interest on the awarded damages at court rates from the date of this judgment until payment in full.
d) The Defendants shall bear the costs of this suit.
T.A. ODERA
JUDGE
23.3.26
DELIVERED VIRTUALLY VIA TEAMS PLATFORM THIS 23RD DAY OF MARCH , 2026, IN THE PRESENCE OF CA -MR OGENDO , PARTIES ABSENT