1. The Applicant moved this court by the Notice of Motion dated 14th May 2026 brought under the provisions of Section 7 of the Trade Marks Act and Section 1A, 1B, 3A & 3B of the Civil Procedure Act, Order 40 Rules 1, 2, 3 and 4 of the Civil Procedure Rules. In a nutshell, the Applicant seeks the following orders:
i. An order restraining the Defendants from infringing, using, dealing in or passing off goods and services under the Plaintiff’s registered trademarks and industrial designs, including the “Royal Bricktile”, “Royal Zeetile”, “Royal Longtile”, “Royal Box Profile” and “Royal Mabati Factory Limited” marks and associated designs.
ii. A freezing order over the Defendants’ M-Pesa Paybill No. 400200 and Co-operative Bank Account No. 1058403;
iii. A mandatory injunction compelling the Defendants to render accounts of profits allegedly derived from the infringement and to deliver up the offending iron sheets and roofing products for destruction; and police assistance in enforcing the orders.
iv. Costs and such further orders as the Court may deem just.
2. The application is premised on the grounds on the face of the record and supported by the affidavit of Caleb Apondo Ochieng, who avers that the Plaintiff is the registered proprietor of various trademarks and industrial designs relating to its iron-sheet products, including “Royal Bricktile,” “Royal Zeetile,” “Royal Longtile,” “Royal Box Profile,” “Royal Mabati Factory”, and the Corrugated and Roman tile industrial designs.
3. It contends that it has traded since 2005 and has invested substantially in building goodwill and reputation in relation to those marks. The Plaintiff alleges that the 2nd to 5th Defendants, former consultants with access to its trade secrets and proprietary information, incorporated the 1st Defendant and thereafter began manufacturing, advertising and selling competing products using substantially similar trademarks, logos, colours and branding, thereby infringing its intellectual property rights and passing off their products as those of the Plaintiff. Despite cease-and-desist demands and an alleged undertaking by the Defendants to adopt different branding, the infringement is said to have continued, causing harm which the Plaintiff maintains cannot be adequately compensated by damages.
4. The Defendants oppose the application through the Replying Affidavit sworn by John Kang’arua Gatharu on 2nd June 2026, denying any deliberate infringement, passing off or unlawful appropriation of the Plaintiff’s trademarks, industrial designs or goodwill. They contend that the 1st Defendant operates independently under the distinct name Vintage Mabati Mills Limited, and that any resemblance in branding arose inadvertently from common terminology and branding concepts within the roofing industry.
5. They further aver that upon receiving the Plaintiff’s demand, they acted in good faith by removing the impugned branding and commencing a rebranding exercise. The Defendants challenge the validity and renewal of some of the Plaintiff’s trademarks and contend that no independent evidence of actual consumer confusion, deception or diversion of customers has been produced.
6. They also argue that there is no evidence of dissipation of assets to justify freezing their accounts and that the mandatory and freezing orders sought would effectively cripple their business and determine the dispute prematurely. Accordingly, they maintain that the Plaintiff has not satisfied the threshold for interlocutory relief and urge the Court to dismiss the application.
7. The application was orally canvassed. I have considered the counsel’s arguments.
Analysis and determination
8. The singular issue for determination is whether the Applicant has met the threshold for granting the orders sought.
9. The Plaintiff's claim rests upon its registered proprietary rights in trademarks and industrial designs in accordance with Section 7(1) of the Trade Marks Act, which vests in the registered proprietor the exclusive right to use the mark in respect of the goods for which it is registered, and affords relief where another uses an identical or deceptively similar mark. At this interlocutory stage, however, the Court is not called upon to finally determine the merits of the infringement claim.
10. In an application for an interlocutory injunction, the onus is on the applicant to satisfy the court that it should grant an injunction. An injunction, being a discretionary remedy, is granted on the basis of evidence and sound legal principles.
11. The legal framework for granting a temporary injunction is well settled. In Giella v Cassman Brown & Co. Ltd [1973] EA 358, the Court established the tripartite test: the applicant must demonstrate a prima facie case with a probability of success; show that damages would not be an adequate remedy; and, if in doubt, the Court determines the matter on a balance of convenience.
12. The Court of Appeal in Nguruman Limited v Jan Bonde Nielsen & 2 Others [2014] eKLR reiterated that these requirements are sequential hurdles and that once an applicant fails to establish a prima facie case, the Court need not consider the remaining limbs.
13. A prima facie case was defined in Mrao Ltd v First American Bank of Kenya Ltd & 2 Others [2003] KLR 125 as one where, on the material before the Court, a tribunal properly directing itself would conclude that a right exists which has apparently been infringed, thereby calling for an explanation from the opposing party.
14. In this case, the Plaintiff has submitted registration certificates for the marks "Royal Bricktile", "Royal Zeetile", "Royal Longtile", "Royal Box Profile", and "Royal Mabati Factory", along with the related industrial designs. The Plaintiff also presented evidence of the Defendants' branding. The Defendants do not outrightly deny some resemblance; instead, they argue that any similarity was unintentional, resulting from common terminology, colors, and concepts used in the roofing industry. Importantly, they admit that after receiving the Plaintiff's demand, they reviewed the contested branding, launched a rebranding effort, and have already removed certain materials.
15. Section 46 of the Trademark’s Act (the Act) has a place at this interlocutory stage. It reads:
“Registration to be prima facie evidence of validity;
In all legal proceedings relating to a registered trade mark (including applications under section 35), the fact that a person is registered as proprietor of the trade mark shall be prima facie evidence of the validity of the original registration of the trade mark and of all subsequent assignments and transmissions thereof.”
16. The court in Pharmaceutical Manufacturing Company vs Novelty Manufacturing Limited: HCCC No.746 of 1998 (UR), Ringera J., as he then was, observed as follows at page 14 of his judgment:
“…Registration of a trademark confers the right to exclusive use of the mark. Infringement of the trade mark is a tort of strict liability. Intention and motive are irrelevant considerations.”
17. Without making definitive findings on infringement at this stage, I am satisfied that the Plaintiff has demonstrated an identifiable proprietary interest deserving protection pending trial. Whether the similarities complained of ultimately amount to infringement or passing off can only be conclusively determined upon examination of the evidence at trial. For present purposes, however, the Plaintiff has established a prima facie case in respect of the alleged use of its registered marks.
18. Regarding irreparable injury, the case concerns trademarks, goodwill, and product identity in the market. Continuing to use branding similar enough to the Plaintiffs’ could confuse consumers and diminish the goodwill associated with the registered marks. Such harm is difficult to measure financially. In Nguruman Limited (supra), the Court noted that irreparable injury refers to significant harm that cannot be sufficiently remedied by damages. Therefore, I am satisfied that preservation of the Plaintiff’s registered marks pending trial is warranted.
19. The position, however, differs with regard to the freezing orders sought against the Defendants' M-Pesa Paybill and bank account. A freezing injunction is an extraordinary remedy designed to prevent dissipation or removal of assets in order to defeat a prospective judgment.
20. In Kuria Kanyoko t/a Amigos Bar and Restaurant v Francis Kinuthia Nderu & Others [1988] 2 KAR 126, the Court held that such orders issue where there is clear proof that the defendant is about to dispose of or remove property with intent to obstruct or delay execution of a decree. The Plaintiff has adduced no sufficient evidence that the Defendants are dissipating, concealing or removing assets with the intention of defeating any decree that may ultimately issue. Freezing the 1st Defendant's operational accounts at this stage would be disproportionate and may effectively cripple its business before liability is established. That prayer accordingly fails.
21. The Plaintiff further seeks mandatory injunctions compelling the Defendants to render accounts of profits and deliver up the allegedly infringing products for destruction. The threshold for a mandatory injunction at an interlocutory stage is considerably higher. In Kenya Breweries Ltd & Another v Washington O. Okeyo [2002] eKLR, the Court of Appeal, adopting the principles in Locabail International Finance Ltd v Agro-Export & Another [1986] 1 ALL ER 901, held that a mandatory injunction ought not ordinarily to be granted on an interlocutory application absent special circumstances, and only in a clear case where the matter ought to be decided at once.
22. The current dispute is not an obvious or extraordinary case. The Defendants challenge the validity and extent of the Plaintiff's intellectual property rights, deny any infringement, and assert that their products and branding are distinct. Issuing orders for an account of profits and destruction of products now would prematurely decide substantive issues without a full trial. Consequently, such orders are premature.
23. Ultimately, the Court must find a fair balance between safeguarding the Plaintiff's registered intellectual property rights and preventing the early resolution or harm to the Defendants' business. I believe this balance is best maintained by prohibiting the Defendants from using the specific registered marks and designs claimed by the Plaintiff, or marks that closely resemble them and could mislead or cause confusion. At the same time, more severe measures such as freezing accounts, profits, or destroying goods should be reserved for full hearing determination.
24. Accordingly, the Notice of Motion dated 14th May 2026 succeeds only in part, and I make the following orders:
i. Pending the hearing and determination of the suit, a temporary injunction is hereby issued restraining the Defendants, whether by themselves, their directors, officers, employees, servants or agents, from using, reproducing, advertising, marketing, distributing or selling products bearing the Plaintiff's registered trademarks "Royal Bricktile", "Royal Zeetile", "Royal Longtile", "Royal Box Profile" and "Royal Mabati Factory", or any mark or branding so nearly resembling the registered marks as to be likely to deceive or cause confusion.
ii. The prayer for freezing orders against M-Pesa Paybill No. 400200 and Co-operative Bank Account No. 1058403 is declined.
iii. The prayers for mandatory injunctions compelling the Defendants to render accounts of profits and to deliver up the allegedly infringing products for destruction are declined at this interlocutory stage.
iv. Each party shall bear its own costs of the application.
Orders accordingly.
RULING delivered virtually, dated and signed at NAIROBI
This 1st day of September 2026.
PETER M. MULWA
JUDGE
In the presence of:
Ms. Sheunda h/b for Ms. Nasimiyu for Plaintiff
Mr. Beyo for Defendants
Court Assistant: Sharon
i. An order restraining the Defendants from infringing, using, dealing in or passing off goods and services under the Plaintiff’s registered trademarks and industrial designs, including the “Royal Bricktile”, “Royal Zeetile”, “Royal Longtile”, “Royal Box Profile” and “Royal Mabati Factory Limited” marks and associated designs.
ii. A freezing order over the Defendants’ M-Pesa Paybill No. 400200 and Co-operative Bank Account No. 1058403;
iii. A mandatory injunction compelling the Defendants to render accounts of profits allegedly derived from the infringement and to deliver up the offending iron sheets and roofing products for destruction; and police assistance in enforcing the orders.
iv. Costs and such further orders as the Court may deem just.
2. The application is premised on the grounds on the face of the record and supported by the affidavit of Caleb Apondo Ochieng, who avers that the Plaintiff is the registered proprietor of various trademarks and industrial designs relating to its iron-sheet products, including “Royal Bricktile,” “Royal Zeetile,” “Royal Longtile,” “Royal Box Profile,” “Royal Mabati Factory”, and the Corrugated and Roman tile industrial designs.
3. It contends that it has traded since 2005 and has invested substantially in building goodwill and reputation in relation to those marks. The Plaintiff alleges that the 2nd to 5th Defendants, former consultants with access to its trade secrets and proprietary information, incorporated the 1st Defendant and thereafter began manufacturing, advertising and selling competing products using substantially similar trademarks, logos, colours and branding, thereby infringing its intellectual property rights and passing off their products as those of the Plaintiff. Despite cease-and-desist demands and an alleged undertaking by the Defendants to adopt different branding, the infringement is said to have continued, causing harm which the Plaintiff maintains cannot be adequately compensated by damages.
4. The Defendants oppose the application through the Replying Affidavit sworn by John Kang’arua Gatharu on 2nd June 2026, denying any deliberate infringement, passing off or unlawful appropriation of the Plaintiff’s trademarks, industrial designs or goodwill. They contend that the 1st Defendant operates independently under the distinct name Vintage Mabati Mills Limited, and that any resemblance in branding arose inadvertently from common terminology and branding concepts within the roofing industry.
5. They further aver that upon receiving the Plaintiff’s demand, they acted in good faith by removing the impugned branding and commencing a rebranding exercise. The Defendants challenge the validity and renewal of some of the Plaintiff’s trademarks and contend that no independent evidence of actual consumer confusion, deception or diversion of customers has been produced.
6. They also argue that there is no evidence of dissipation of assets to justify freezing their accounts and that the mandatory and freezing orders sought would effectively cripple their business and determine the dispute prematurely. Accordingly, they maintain that the Plaintiff has not satisfied the threshold for interlocutory relief and urge the Court to dismiss the application.
7. The application was orally canvassed. I have considered the counsel’s arguments.
Analysis and determination
8. The singular issue for determination is whether the Applicant has met the threshold for granting the orders sought.
9. The Plaintiff's claim rests upon its registered proprietary rights in trademarks and industrial designs in accordance with Section 7(1) of the Trade Marks Act, which vests in the registered proprietor the exclusive right to use the mark in respect of the goods for which it is registered, and affords relief where another uses an identical or deceptively similar mark. At this interlocutory stage, however, the Court is not called upon to finally determine the merits of the infringement claim.
10. In an application for an interlocutory injunction, the onus is on the applicant to satisfy the court that it should grant an injunction. An injunction, being a discretionary remedy, is granted on the basis of evidence and sound legal principles.
11. The legal framework for granting a temporary injunction is well settled. In Giella v Cassman Brown & Co. Ltd [1973] EA 358, the Court established the tripartite test: the applicant must demonstrate a prima facie case with a probability of success; show that damages would not be an adequate remedy; and, if in doubt, the Court determines the matter on a balance of convenience.
12. The Court of Appeal in Nguruman Limited v Jan Bonde Nielsen & 2 Others [2014] eKLR reiterated that these requirements are sequential hurdles and that once an applicant fails to establish a prima facie case, the Court need not consider the remaining limbs.
13. A prima facie case was defined in Mrao Ltd v First American Bank of Kenya Ltd & 2 Others [2003] KLR 125 as one where, on the material before the Court, a tribunal properly directing itself would conclude that a right exists which has apparently been infringed, thereby calling for an explanation from the opposing party.
14. In this case, the Plaintiff has submitted registration certificates for the marks "Royal Bricktile", "Royal Zeetile", "Royal Longtile", "Royal Box Profile", and "Royal Mabati Factory", along with the related industrial designs. The Plaintiff also presented evidence of the Defendants' branding. The Defendants do not outrightly deny some resemblance; instead, they argue that any similarity was unintentional, resulting from common terminology, colors, and concepts used in the roofing industry. Importantly, they admit that after receiving the Plaintiff's demand, they reviewed the contested branding, launched a rebranding effort, and have already removed certain materials.
15. Section 46 of the Trademark’s Act (the Act) has a place at this interlocutory stage. It reads:
“Registration to be prima facie evidence of validity;
In all legal proceedings relating to a registered trade mark (including applications under section 35), the fact that a person is registered as proprietor of the trade mark shall be prima facie evidence of the validity of the original registration of the trade mark and of all subsequent assignments and transmissions thereof.”
16. The court in Pharmaceutical Manufacturing Company vs Novelty Manufacturing Limited: HCCC No.746 of 1998 (UR), Ringera J., as he then was, observed as follows at page 14 of his judgment:
“…Registration of a trademark confers the right to exclusive use of the mark. Infringement of the trade mark is a tort of strict liability. Intention and motive are irrelevant considerations.”
17. Without making definitive findings on infringement at this stage, I am satisfied that the Plaintiff has demonstrated an identifiable proprietary interest deserving protection pending trial. Whether the similarities complained of ultimately amount to infringement or passing off can only be conclusively determined upon examination of the evidence at trial. For present purposes, however, the Plaintiff has established a prima facie case in respect of the alleged use of its registered marks.
18. Regarding irreparable injury, the case concerns trademarks, goodwill, and product identity in the market. Continuing to use branding similar enough to the Plaintiffs’ could confuse consumers and diminish the goodwill associated with the registered marks. Such harm is difficult to measure financially. In Nguruman Limited (supra), the Court noted that irreparable injury refers to significant harm that cannot be sufficiently remedied by damages. Therefore, I am satisfied that preservation of the Plaintiff’s registered marks pending trial is warranted.
19. The position, however, differs with regard to the freezing orders sought against the Defendants' M-Pesa Paybill and bank account. A freezing injunction is an extraordinary remedy designed to prevent dissipation or removal of assets in order to defeat a prospective judgment.
20. In Kuria Kanyoko t/a Amigos Bar and Restaurant v Francis Kinuthia Nderu & Others [1988] 2 KAR 126, the Court held that such orders issue where there is clear proof that the defendant is about to dispose of or remove property with intent to obstruct or delay execution of a decree. The Plaintiff has adduced no sufficient evidence that the Defendants are dissipating, concealing or removing assets with the intention of defeating any decree that may ultimately issue. Freezing the 1st Defendant's operational accounts at this stage would be disproportionate and may effectively cripple its business before liability is established. That prayer accordingly fails.
21. The Plaintiff further seeks mandatory injunctions compelling the Defendants to render accounts of profits and deliver up the allegedly infringing products for destruction. The threshold for a mandatory injunction at an interlocutory stage is considerably higher. In Kenya Breweries Ltd & Another v Washington O. Okeyo [2002] eKLR, the Court of Appeal, adopting the principles in Locabail International Finance Ltd v Agro-Export & Another [1986] 1 ALL ER 901, held that a mandatory injunction ought not ordinarily to be granted on an interlocutory application absent special circumstances, and only in a clear case where the matter ought to be decided at once.
22. The current dispute is not an obvious or extraordinary case. The Defendants challenge the validity and extent of the Plaintiff's intellectual property rights, deny any infringement, and assert that their products and branding are distinct. Issuing orders for an account of profits and destruction of products now would prematurely decide substantive issues without a full trial. Consequently, such orders are premature.
23. Ultimately, the Court must find a fair balance between safeguarding the Plaintiff's registered intellectual property rights and preventing the early resolution or harm to the Defendants' business. I believe this balance is best maintained by prohibiting the Defendants from using the specific registered marks and designs claimed by the Plaintiff, or marks that closely resemble them and could mislead or cause confusion. At the same time, more severe measures such as freezing accounts, profits, or destroying goods should be reserved for full hearing determination.
24. Accordingly, the Notice of Motion dated 14th May 2026 succeeds only in part, and I make the following orders:
i. Pending the hearing and determination of the suit, a temporary injunction is hereby issued restraining the Defendants, whether by themselves, their directors, officers, employees, servants or agents, from using, reproducing, advertising, marketing, distributing or selling products bearing the Plaintiff's registered trademarks "Royal Bricktile", "Royal Zeetile", "Royal Longtile", "Royal Box Profile" and "Royal Mabati Factory", or any mark or branding so nearly resembling the registered marks as to be likely to deceive or cause confusion.
ii. The prayer for freezing orders against M-Pesa Paybill No. 400200 and Co-operative Bank Account No. 1058403 is declined.
iii. The prayers for mandatory injunctions compelling the Defendants to render accounts of profits and to deliver up the allegedly infringing products for destruction are declined at this interlocutory stage.
iv. Each party shall bear its own costs of the application.
Orders accordingly.
RULING delivered virtually, dated and signed at NAIROBI
This 1st day of September 2026.
PETER M. MULWA
JUDGE
In the presence of:
Ms. Sheunda h/b for Ms. Nasimiyu for Plaintiff
Mr. Beyo for Defendants
Court Assistant: Sharon