Kenya offers statutory protection of intellectual property rights primarily under two laws: the Industrial Property Act (“IPA”), the Copyright Act and the Trade Marks Act. In respect of industrial designs (“IDs”), the IPA sets out the criteria for registration and consequent protection as follows at section 84(1)the IPA: “an industrial design means any composition of lines or colours or any three dimensional form, whether or not associated with lines or colours: Provided that such composition or form gives a special appearance to the product of industry or handicraft and can serve as a pattern for a product of industry or handcraft.
In essence, industrial design registration is conferred solely on the basis of appearance, and more particularly on new visual features that give the articles they are applied to a ‘special appearance’. For a design to be registered, it must be new. The novelty threshold, as is the case with patents, is a world-wide novelty.
Registration of an industrial design confers upon its registered owner the right to preclude third parties from performing any of the following registration acts in Kenya: –
- reproducing the industrial design in the manufacture of a product;
- importing, offering for sale and selling a product reproducing the protected industrial design; or
- stocking of such a product for the purposes of offering it for sale or selling it.
A person infringes a registered industrial design by performing, without consent of the registered owner, any of the acts referred above or performing acts which make it likely that infringement will occur.
Summary of the case
On 31 August 2022, the Industrial Property Tribunal (“Tribunal”) delivered the decision in IPT Case number 98 of 2021, Kenrub Limited v Metro-Poly Kenya Limited. A summary of the claims and response is as follows
On 29th June 2021, Kenrub Limited (“Kenrub”) filed a claim for industrial design infringement (“Infringement Claim”) under section 106 of the IPA against Metro-Polykenya Limited (“Metro-Poly”) before the Industrial Property Tribunal.
Kenrub’s case was that it is the registered owner of Industrial Design number 1090 (“ID 1090”), having registered the same on 12th October 2018, and with the article on which the ID 1090 was to be applied being stated in the industrial design application as a wheel.
Kenrub claimed that on or about January 2021, it had discovered that Metro-Poly had been manufacturing and offering for sale a wheel that resembled and incorporated its registered ID 1090, and the same having been done without its authorisation, amounted to infringement of ID 1090.
In response to the Infringement Claim, Metro-Poly stated that the design of its wheel was itself new, having been designed by its Managing Director, and being differentiated from Kenrub’s industrial design. Metro-Poly did not raise any claim as to invalidity of Kenrub’s ID 1090.
In the course of the parties’ various filings, Kenrub produced in evidence physical and picture samples of the wheel it was manufacturing, which wheel it claimed embodied or featured ID 1090 and which was the wheel that it claimed was infringed by Metro-Poly’s manufactured wheel. Additionally, Kenrub adduced in its evidence picture samples of Metro-Poly’s wheel which it alleged infringed ID 1090.
Tribunal’s findings
In determining the Infringement Claim, the Tribunal restated the law relating to industrial design registration setting out the criteria for industrial design protection in Kenya.
The Tribunal went on to state that given that design protection is on the ‘overall appearance of a product resulting from one or more visual features of the shape, pattern or ornamentation of a product’ it was necessary for it to be “presented with a representation of or actual registered industrial design that is said to be infringed as well as the accused design in order to draw out the similarities and difference…”
The Tribunal held that in determining industrial design infringement matters, “the test is a visual one” involving a comparison of the allegedly infringing article against the registered industrial design. The Tribunal also relied on the case of Procter & Gamble Company Vs Rechitt Benkiser (UK) Ltd [2007] EWCA Civ 936 where it was held that “the most important thing in a case about registered Designs are the registered design, the accused design and prior art.”
The Tribunal concluded that by virtue of the burden of proof in an infringement claim being on the claimant/applicant/requestor- Kenrub in this case- it was accordingly Kenrub’s duty, in the course of discharging that burden in its Infringement Claim, to tender clear images or representation of the registered ID 1090 as registered with the Kenya Industrial Property Institute on or about 12th October 2018; It was not sufficient for Kenrub to adduce physical and or clear picture images of the wheel that it was actually manufacturing.
The Tribunal noted that while Kenrub had provided pictorial representations of the registered Industrial Design 1090, these were insufficiently clear for the Tribunal to make a comparison between the registered ID 1090 and the several photographs of Metro-Poly’s allegedly infringing wheel.
Consequently, the Tribunal found that Kenrub’s Infringement Claim against Metro-Poly with respect to its registered ID 1090 had not been proved, and as such the Tribunal dismissed it with costs to Metro-Poly.
In conclusion, this decision of the Tribunal effectively has clarified that an industrial design infringement claim turns on a visual comparison of an allegedly infringing product as against a registered industrial design (as registered at KIPI), and nothing turns on a claimant’s manufactured article.
We laud the Tribunal’s clarity in this very practical matter for our local manufacturing sector in Kenya. The Tribunal’s decision is to the effect that only a claimant’s registered industrial design can be the subject of an infringement, and not that claimant’s various manufactured designs.
A person claiming infringement of its registered industrial design cannot therefore provide evidence of any product it has commercialised under the guise that such a commercialised product bears the registered industrial design; such a claimant must adduce evidence of the design that was in fact registered (and accordingly subjected to necessary examination and scrutiny by the Kenya Industrial Property Institute) in order to then set the stage for the visual assessment of features to determine infringement of the registered design.
This decision has maintained the integrity of the intellectual property system with the monopoly it affords owners of registered intellectual property rights.