In the recent case of LRC Products Limited v Metro Pharmaceuticals Limited [2016] eKLR, the Kenyan High Court dismissed an application by the Plaintiff for an interim interdict restraining the Defendant from, inter alia,  importing DUREX products. The Plaintiff is the registered proprietor of trade mark no. KE/T/1987/0036294 DUREX in class 3 in Kenya.  The Plaintiff had also sought orders to enter the Defendant’s premises and seize all products or packaged products bearing its DUREX trade mark, or similar trade marks, and further seize records of purchases and sales, invoices and any other documents which constitute or would constitute evidence necessary to substantiate its cause of action, being trade mark infringement.

In considering the plaintiff’s application, the two issues for determination were:

  • is there infringement of the Plaintiff’s DUREX trade mark?; and
  • did the Plaintiff establish a prima facie case with probability of success?

The Defendant admitted that it was neither a manufacturer, nor a proprietor of the DUREX  trade mark. However, it claimed that it is an importer of the DUREX products belonging to the Plaintiff, and that it has never refuted or disputed the Plaintiff’s ownership of the products. The Defendant further submitted that, as a mere importer not being in direct or indirect competition with the Plaintiff, it could not have infringed the Plaintiff’s rights in the DUREX trade mark.

The cornerstone of the Defendant’s case was that there is no factual or legislative bar to its importation and distribution of  DUREX products, and that, in essence, it was licensed to import parallel DUREX products , from any of the Plaintiff’s other distributors who distributed the Plaintiff’s DUREX products under its authorisation. In this regard, the Defendant relied on the case of Lord Healthcare Ltd v Salama Pharmaceuticals Ltd [2008] eKLR where it was held inter alia;

“Neither the Plaintiff nor the Defendant is a manufacturer of the product “Budecort-200 Budesonide Inhaler”. The product sold by the Plaintiff is manufactured by Cipla Ltd India who has given the Plaintiff exclusive rights of distributorship of the product in Kenya. The Defendant is selling the same product manufactured by Cipla Ltd India under license from the International Registered Owner Fujisawa Deutschland GmhH who has international protection under the Paris Convention. The Defendant contends that the “Budecort” products are supplied by Cipla Ltd in more than one country and parallel importation allows for importation of the same product from such other markets. All these are contentious issues which can only be determined at the trial after the Court has had the benefit of hearing full evidence.”

In finding in favour of the Defendant, the court agreed that the facts of the present case are similar to the facts of the Salama Pharmaceuticals Ltd case supra, save that the Defendant  in this case claims simply to be an importer of the Plaintiff’s genuine products from third parties who may have a distributorship agreement with the Plaintiff. On this basis, the Court found that the Plaintiff had not established a prima facie case of infringement which warranted the issuance of an interdict against the Defendant.

This ruling confirms that a trade mark will not be infringed by the importation into or distribution, sale or offering for sale, in Kenya of goods to which a trade mark has been applied by or with the consent of the proprietor.

by Kim Rampersadh | Senior Associate 

Kelly Thompson
Partner | Trade Mark Attorney
Kim Rampersadh
Partner | Trade Mark Attorney
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