High Court reaffirms procedural correctness as the heart of the registrar’s rulings

Kenya
  • The High Court has held that, once the registrar has issued a decision, the matter can only be subject to review or appeal by the court
  • The restoration proceedings conducted by the assistant registrar in the underlying proceedings were null and void for want of jurisdiction
  • The wide discretion given to the registrar is strictly subject to the procedures laid out by the Trademarks Act/Rules and the principles of procedural fairness

 

In an appellate ruling delivered by Justice PJO Otieno, the High Court of Kenya in Mombasa (via Civil Appeal No 251 of 2017 consolidated with No 252 & 253 of 2017) has reaffirmed that procedural correctness is a fundamental factor in the determination of disputes by the registrar.

Background

The facts of the case involved an application by Doshi Ironmongers Limited (‘Doshi’) to have the word mark THERMOS (the ‘disputed mark’) registered in its name. This had initially been rejected on the basis that it was identical to a registered mark (No 17003) in the name of Thermos Ltd. The mark No 17003 was subsequently removed for non-renewal and the application by Doshi was approved.

Upon publication of Doshi’s application, Thermos Hongkong Limited (‘THL’) made a restoration request on the basis that the disputed mark was assigned to Thermos KK, which had then assigned it to THL, and that the statutory notices leading to the removal had been misaddressed and were therefore invalid.

The registrar restored the disputed mark on the basis that the renewal notices had not been sent to the registered proprietor. Notably, the request for restoration of the disputed mark had been previously rejected by the registrar. On restoration, THL lodged a notice of opposition against Doshi’s application, which Doshi opposed via a counterstatement. The subsequent assistant registrar’s decision then led to the appeal.

Court decision

The crux of the case was whether the assistant registrar had the jurisdiction to review the decision of the registrar on the request to restore the disputed mark by THL, and whether the decision amounted to an appellate proceeding over the registrar’s decisions.

While appreciating that the powers of the registrar are exercisable by an assistant registrar (including the power to restore a mark), the court opined that the Trademark Rules do not anticipate a review or revisit of a decision by the registrar. The court further held that, once the registrar has issued a decision, he becomes functus officio and the matter can only be subject to review or appeal by the court. Thus, the court held that the restoration proceedings conducted by the assistant registrar were null and void for want of jurisdiction.

Putting it into perspective

The ruling essentially reaffirms that the wide discretion given to the registrar (and his assistants) under the Trademarks Act/Rules in the determination of disputes before them is strictly subject to the procedures laid out by the act/rules and the principles of procedural fairness. The ruling confirms that a court of law will not hold itself back in setting aside decisions of the registrar for want of procedural correctness. In addition, the ruling reiterates that, once the registrar has made a decision, he becomes functus officio and the decision can only be subject to a review or appeal by the court.

This is an important decision that provides clarity and certainty with respect to dealings with the registrar’s office. Parties appearing before the registrar will now be assured that the courts will be ready to remedy any procedural unfairness which might occur. Further, they can rest assured that procedure has been properly followed once the registrar has issued a decision.

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