Cross-examination is possible in cancellation proceedings in Kenya

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In Biostadt India Limited v Osho Chemical Industries Limited, Biostadt applied for the expungement of the WOKOZIM trade mark registered in the name of Osho in relation to botanical organic foliar/ fertilizer. However, it is not the cancellation proceedings per se that have broken ground in Kenya, but rather an unusual order for cross examination of one of the witnesses who had deposed to a statutory declaration in the matter.

The parties had a commercial relationship pre-dating the registration of the impugned mark by ten years. The predecessor of Biostadt entered into a distributorship agreement with Osho in 1993 regarding the distribution in Kenya of goods bearing the WOKOZIM trade mark. Upon acquisition of the trade mark from its predecessor, the distributorship agreement was continued with Osho, despite not being reduced to writing. It was accepted that the terms of the agreement could be inferred from the parties’ conduct. On Biostadt’s version of the facts, Osho was responsible for the promotion, distribution and marketing of Biostatd’s goods in Kenya and was obliged not to lay any claim to the mark WOKOZIM.  Biostadt claimed, inter alia, that the registration of the WOKOZIM trade mark was mala fides, constituted unfair competition and a bar to registration of its own mark and that registration and use of the mark by Osho would lead to confusion or deception.

In response, Osho claimed that Biostadt was aware of its use of the WOKOZIM trade mark and of its registration. It claimed, inter alia, that Biostadt had not objected to registration of the mark, nor asserted its rights when it was informed of the registration of the mark by Osho in 2007. Osho claimed that Biostadt had acquiesced to its conduct and, by virtue of this fact, was estopped from asserting its rights at this stage.

Numerous pleadings wereexchanged in the case, but the most contested issue was whether Osho duly notified Biostadt of its registration of the WOKOZIM trade mark several years before the institution of the expungement proceedings. In this regard, Osho claimed that an email, containing a registration certificate as an attachment and notifying Biostadt of the registration of the WOZOKIM trade mark, had been sent to the marketing manager of Biostadt on 17 September 2007. Biostadt disputed that this email was ever received.

In light of this dispute of fact, Osho made application for the cross-examination of the deponent to Biostadt’s many declarations, who was its General Legal Counsel, based in India. This application was opposed on the grounds that it would delay proceedings, amount to a fishing expedition and cause Biostadt to incur additional costs unnecessarily. However, the Registrar of Trade Marks noted that, in terms of Section 54(1) of the Kenyan Trade Marks Act, evidence by way of oral testimony may be given in lieu of, or in addition to, evidence by way of statutory declaration. In exercising this discretion in favour of Osho, the Registrar found that clarity was required on an issue relevant to the determination of the case and that, given that the issue had been appropriately identified, the cross-examination would not amount to a fishing expedition. The Registrar also felt that the advantages of continuing with the cross-examination outweighed the concerns that Biostadt had regarding the associated costs. Accordingly, the General Legal Counsel of Biostadt has been ordered to attend the hearing of the expungement proceedings in person.

While cross-examination or oral testimony is unlikely to be the norm in proceedings before the Registrar in Kenya,  it is worth bearing in mind that, in certain circumstances, it is justifiable and within the discretion of the Registrar to direct that a deponent travel to Kenya to provide oral evidence.

by Kim Rampersadh | Senior Associate

KIM RAMPERSADH

Senior Associate
Trade Mark Attorney

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