Background and Introduction
1. This Ruling determines three applications. The plaintiff’s applications are dated 6th May 2023 and 10th July 2024. They both seek contempt orders against the defendant and its agents in light of the court orders issued on 23rd May 2022, damages and to have the contemnors fined or jailed. The latter application additionally seeks an order barring the Registrar of Trademarks from registering the mark.
2. The defendant’s application on the other hand is dated 3rd June 2024. It seeks to stay the proceedings herein pending the hearing and determination of an appeal against the Ruling delivered on 2nd May 2024 by this court (Prof. Sifuna J.). The said Ruling had the effect of dismissing an application filed by the plaintiff seeking to stay the proceedings of this court pending the consideration of the proceedings before the Registrar. The applications are all opposed. There is additionally a Notice of Preliminary Objection dated 18th July 2024.
3. The court directed that the applications and the preliminary objection be canvassed by way of written submissions which I have equally considered.
Analysis and Determination
The preliminary objection:
4. The objection raised by the defendants is premised on the fact that the application of 10th July 2024 is an abuse of court as the same seeks similar prayers to the application of 6th May 2023 and that the same is clothed as an appeal against the orders of this Court (Sifuna.J).
5. I have looked at the applications referred to in the preliminary objection and indeed it is true that they both seek similar orders. The preliminary objection having been raised in the application of 10th July 2024, that application is therefore struck out with costs to the defendant.
The application for contempt of court:
6. The ingredients necessary for a successful contempt prosecution were outlined by the Court of Appeal in Mwangi Mangondu V Nairobi City Council, (CA No. 95 of 1988) where it held that:
“[T]he court will only punish as a contempt breach of injunction if satisfied that the terms of the injunction are clear and unambiguous, that the defendant has proper notice of the terms and that breach of the injunction has been proved beyond reasonable doubt.”
7. The standard of proof in contempt cases was later refined in Gatharia K. Mutitika V Baharini Farm Ltd, [1985] KLR 227. The Court of Appeal acknowledged that contempt of court is criminal in nature; therefore, the required standard of proof ought to be higher than the balance of probabilities, almost, but not exactly, beyond reasonable doubt. The court further emphasized that: 'guilt must be proved with a degree of strictness consistent with the gravity of the charge’.
8. The plaintiff’s reason for stating that the defendant and its agents had disobeyed the court’s orders was the fact that the defendant was still pursuing the application and registration of its Trademark with the Registrar. The injunction orders issued on 23rd May 2022 restrained the defendant “…from trading, promoting, advertising, marketing /carrying a business and /or any other trade documents of any nature with the said T.M.NO. 93225 Collabo Adverts Election Campaign logo”.
9. I agree with the defendant that the order did not stop them from pursuing the application which was pending determination and which preceded the filing of this proceedings. The evidence on record shows that in fact the application for registration of the mark was received by the Registrar of Trademarks on 24th March 2021 and published on 31st August 2021 (page 1 and 2 respondent’s documents). This predates the orders of this court and as such the defendants cannot be said to have been acting in contempt of the court orders.
10. I have not been provided with any evidence that since the order was issued, the defendant has either traded, promoted, advertised, marketed or carried out its business with the plaintiff’s trademark, for the court to find that the defendant has been in contempt of the injunction order. There was also no order stopping the proceedings with the Registrar for the court to find that the defendant was in contempt for continuing to engage and pursue its application with the Registrar.
11. It is only in the ruling of 2nd May 2024 that this court declined to stay the proceedings in this suit and also declined to allow the Registrar to proceed with the registration of the defendant’s contested Trademark application as urged by the defendant, as this would have defeated the purpose of the injunction. It is therefore my finding that the defendant was not in contempt of the court’s orders of 23rd May 2022 when it continued to pursue its application with the Registrar.
The application for stay of proceedings pending appeal:
12. The decision to grant a stay of proceedings is discretionary, but this discretion must be exercised judiciously. The court must consider whether granting the stay serves the interests of justice, ensuring that the appeal is not rendered nugatory. Additionally, such an application must be made in a timely manner. See Millicent Wamaitha Njogu V Pauline Nyambura Waweru, [2022] KEHC 1824 (KLR).
13. In my view, I find that it would not serve the interests of justice to grant the stay of this proceedings for a number of reasons. First, the court has already ruled on a similar application declining to stay these proceedings and it would be defeatist of its own orders to now allow stay of this proceedings. Second, it is in the interest of justice for the parties that this matter be finalized at the earliest as it is running parallel to the proceedings of the Registrar who cannot now make a determination in light of the court’s ruling of 2nd May 2024. Therefore, to avoid an embarrassing situation for both this court and the Registrar, it will be tidy that this matter is finalized without interruption and for the parties to find out where they stand in respect of the impugned Trademarks.
14. I further rely on the provisions of section 53 of the Trade Marks Act, which provides for the procedure in cases of an option to apply to Court or to the Registrar. It reads as follows:
“Where under any of the foregoing provisions of this Act an applicant has an option to make an application either to the court or to the Registrar—
(a) if an action concerning in the trade mark in question is pending, the application shall be made to the court;
(b) if in any other case the application is made to the Registrar, he may, at any stage of the proceedings, refer the application to the court, or he may after hearing the parties determine the question between them, subject to appeal to the court.”
15. My reading of the provision is that Section 53 effectively delineates the jurisdiction of the High Court and the Registrar of Trade Marks based on the status of the application and any pending actions. Under section 53(a), if there is an ongoing action concerning the trade mark in question, the application must be made to the court. This ensures that all related matters are handled by the court to maintain consistency and avoid conflicting decisions.
Conclusion and Disposition
16. Accordingly, for the reasons stated, the applications dated 6th May 2023 and 3rd June 2024 are without merit and they are hereby dismissed with costs.
DATED, SIGNED AND DELIVERED IN NAIROBI
THIS 21ST DAY OF FEBRUARY 2025.
F. MUGAMBI
JUDGE